OPPOSITION DIVISION




OPPOSITION No B 2 504 713


Roller GmbH & Co. KG, Willy-Brandt-Allee 72, 45891 Gelsenkirchen, Germany (opponent), represented by Wagner Rechtsanwälte Webvocat Partnerschaft, Großherzog-Friedrich-Str. 40, 66111 Saarbrücken, Germany (professional representative)


a g a i n s t


Roller Äritarkvara OÜ, Tulika 18-5, 10613 Tallinn, Estonia (applicant), represented by AAA Patendibüroo OÜ, Tartu mnt 16, 10117 Tallinn, Estonia (professional representative)


On 19/08/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 504 713 is upheld for all the contested goods and services.


2. European Union trade mark application No 13 621 801 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 13 621 801. The opposition is based on German trade mark registration No 30 120 935. The opponent invoked Article 8(1)(a) and (b) EUTMR.



PROOF OF USE


In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.


According to the same provision, in the absence of such proof the opposition must be rejected.


The applicant requested that the opponent submit proof of use of the earlier German trade mark No 30 120 935.


According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark. According to Section 25 (5) of the German Trade Mark Act, the grace period for German trade marks starts with the termination of the opposition proceedings.


In the present case the contested trade mark was published on 27/01/2015 and the opposition proceedings filed against earlier German trade mark No 30 120 935 ended on 17/02/2014.


Therefore, the request for proof of use is inadmissible.



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: adding machines; grids for batteries; plates for batteries; acidimeters for batteries; battery jars; battery boxes; couplers (acoustic-); alarm belts, electric; whistle alarms; alcoholmeters; gas testing instruments; air analysis apparatus; food analysis apparatus; testing apparatus not for medical purposes; anemometers; armatures [electricity]; answering machines; junction boxes [electricity]; switchboards; connections for electric lines; aerials; anticathodes; indicators [electricity]; speed indicators; electric loss indicators; temperature indicators; water level indicators; notice boards (electronic-); diving suits; mirrors for inspecting work; electric installations for the remote control of industrial operations; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; astronomy (apparatus and instruments for -); breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration; respiratory masks, other than for artificial respiration; filters for respirations masks; respirations for filtering air; thermionic valves [radio]; distance recording apparatus; elevator operating apparatus; eyeshades; distribution machines, automatic; balancing apparatus; ticket dispensers; amusement machines, automatic and coin-operated; coin-operated apparatus (mechanisms for -); counter-operated apparatus (mechanisms for -); azimuth instruments; beacons, luminous; meteorological balloons; magnetic tapes; videotapes; barometers; solar batteries; batteries for lighting; limiters [electricity]; roads signs, luminous or mechanical; clothing for protection against fire; garments for protection against fire; clothing for protection against accidents, irradiation and fire; exposure meters [light meters]; gasoline gauges; observation instruments; particle accelerators; betatrons; phototelegraphy apparatus; video telephones; plumb bobs; galena crystals [detectors]; plumb lines; antidazzle shades; lightning conductors [rods]; beacons, luminous; marking buoys; lifebuoys; signalling buoys; postage stamp meters; letter scales; spectacles [optics]; spectacles cases; spectacles frames; spectacles glasses; weighbridges; incubators for bacteria culture; accounting machines; fIat irons, electric; chemistry apparatus and instruments; chips [integrated circuits]; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; magnetic encodes; compact discs [read-only memory]; compact discs [audio-video]; computers; computer programs, recorded; computer software, recorded; computer operating programs, recorded; computer peripheral devices; computer keyboards; data processing apparatus; decompression chambers; densimeters; densitometers; distillation apparatus for scientific purposes; stills for laboratory experiments; detectors; diagnostic apparatus, not for medical purposes; frames for photographic transparencies; centering apparatus for photographic transparencies; slide projectors; densimeters; theft prevention installation, electric; anti-theft warning apparatus; diffraction apparatus [microscopy]; dictating machines; light dimmers [regulators], electric; alidades; floppy disks; disk drivers for computers; dosage dispensers; wires, electric; magnetic wires; telegraph wires; telephone wires; fuse wire; turnstiles, automatic; revolution counters; choking oils [impedance]; printers for use with computers; pressure indicator plugs for valves; pressure measuring apparatus; pressure indicators; pressure in vehicle tires [tyres] (automatic indicators of low -); dynamometers; egg-candlers; electro-dynamic apparatus for the remote control of railway points; welding electrodes; cables, electric; electrolysers; electromagnetic oils; electronic pens [visual display units]; receivers (audio- and video- -); range finders; discharge tubes, electric; other than for lighting; demagnetizing apparatus for magnetic tapes; anti-interference devices [electricity); epidascopes; ergometers; eyeglass cases; container for contact lenses; furnaces for laboratory experiments; thread counters; ticket dispensers; milage recorders for vehicles; steering apparatus, automatic, for vehicles; motor fire engines; speed checking apparatus for vehicles; voltage regulators for vehicles; invoicing machines; counterfeit [false] coin detectors; binoculars; skins (apparatus for measuring the thickness of -); binoculars; telescopes; telerupters; teleprinters; coint-operated mechanisms for television sets; television apparatus; telephone apparatus; electro-dynamic apparatus for the remote control of signals; remote control apparatus; igniting apparatus, electric, for igniting at a distance; fire boots; fire blankets; extinguishers; fire hose nozzles; fire alarms; fire beaters; clothing for protection against fire; garments for protection against fire; fire engines; animated cartoons; life-saving rafts; fluorescent screens; franking (apparatus to check -); frequency meters; spark-guards; masts for wireless aerials; radiotelephony sets; radiotelegraphy sets; galvanic cells; galvanic batteries; galvanizing apparatus; galvanometers; electroplating apparatus; fermentation (apparatus for-) [laboratory apparatus]; gasometers; printed circuits; money counting and sorting machines; speed checking apparatus for vehicles; speed regulators for record players; workmen’s protective face-shields; weights; screw-tapping gauges; glass covered with an electrical conductor; measuring glassware; retorts; current rectifiers; signal bells; swimming belts; semi-conductors; salinometers; holders for electric coils; gloves for protection against X-rays for industrial purposes; gloves for divers; gloves for protection against accidents; high-frequency apparatus; altimeters; holograms; dog whistles; hydrometers; hygrometers; identity cards, magnetic; inductors [electricity]; attracting and killing insects (electric devices for -);interfaces for computers; ionisation apparatus, not for the treatment of air; electricity conduits; identification threads for electric wires; identification sheaths for electric wires; wire connectors [electricity]; sheaths for electric cables; kaleidoscopes; calipers; calibrating rings; capillary tubes; encoded cards, magnetic; integrated circuits cards [smart cards]; cash registers; cassette players; cathodes; boiler control instruments; eyeglass chains; surveying chains; switchboxes [electricity]; optical character readers; terminals [electricity]; push buttons for bells; bells [warning devices]; electric door bells; slope indicators; pince-nez; pince-nez mountings; eyeglass cords; knee-pads for workers; collectors, electric; comparators; compasses (directional -); marine compasses; condensers [capacitors]; condensers (optical -); contacts, electric; contacts, electric, of precious metal; contact lenses; regulating apparatus, electric; couplers (acoustic-); couplers [data processing equipment]; cosmographic instruments; gasoline gauges; bullet-proof waistcoats [vests]; copper wire, insulated; couplings, electric; laboratory trays lactodensimeters; lactometers; thermionic lamps and tubes; surveying instruments; computers; lasers, not for medical purposes; pointers (light-emitting electronic -); magic lanterns; signal lanterns; horns for loudspeakers; leather (appliances for measuring the thickness of -); gauges; jigs [measuring instruments]; conductors, electric; fire escapes; electricity mains (materials for -) [wires, cables]; acoustic conduits; ducts [electricity]; readers [data processing equipment]; bar code readers; beacons, luminous; signs, luminous; electric arc cutting, apparatus; electric arc welding, apparatus; optical fibers [fibres] [light conducting filaments]; blueprint apparatus; heliographic apparatus; photometers; elevator operating apparatus; rulers [measuring instruments], punched card machines for offices; hair-curlers, electrically heated; logs [measuring instruments]; soldering apparatus, electric; plumb bobs; soldering irons, electric; sounding apparatus and machines; air analysis apparatus; magnets; disks, magnetic; pressure gauges; marking buoys; protective masks; divers’ masks; solderers’ helmets; measures; rules [measuring instruments]; dressmakers’ measures; material testing instruments and machines; mathematical instruments; mouse [data processing equipment]; megaphones; diaphragms [acoustic]; diaphragms for scientific apparatus; quantity indicators; measuring apparatus; measuring devices, electric; precision measuring apparatus; measuring glassware; measuring instruments; levelling staffs [surveying instruments]; measuring spoons; levelling staffs [surveying instruments]; metal detectors for industrial or military purposes; meteorological balloons; meteorological instruments; rules [measuring instruments]; metronomes; micrometers; micrometer screws for optical instruments; microphones; microscopes; microtomes; furniture especially made for laboratories; modems; junction sleeve for electric cables; teeth protectors; juke boxes, musical; juke boxes, musical; food analysis apparatus; nautical apparatus and instruments; navigational instruments; fog signals, non explosive; slope indicators; neon signs; safety nets; surveyors’ levels; levelling instruments; verniers; notebook computers; objectives [lenses] [optics]; containers for microscope slides; furnaces for laboratory experiments; ohmmeters; ear plugs for divers; octants; eyepieces (instruments containing -); hair-curlers, electrically heated; optical goods; oscillographs; ozonisers [ozonators]; parking meters; pedometers; periscopes; physics (apparatus and instruments for -); pipettes; safety tarpaulins; planimeters; plates for batteries; needles for record players; tone arms for record players; record player needles (apparatus for changing -); juke boxes for computer; plotters; polarimeters; mercury levels; radar apparatus; radiological apparatus for industrial purposes; smoke detectors; capacity measures; test tubes; abacuses; calculation machines; calculating disks; slide-rules; reflecting discs for wear, for the prevention of traffic accidents; refractometers; refractors; cash registers; head cleaning tapes [recording]; cleaning apparatus for phonograph records; relays, electric; retorts; retort’s stands; life belts; life saving apparatus and equipment; life jackets; rheostats; levels [instruments for determining the horizontal]; hemline makers; amplifying yubes; roentgen apparatus not for medical purposes; x-ray photographs, other than for medical purposes; x-ray films, exposed; x-rays tubes not for medical purposes; radiology screens for industrial purposes; x-ray producing apparatus and installations, not for medical purposes; protection devices against x-rays [roentgen rays], not for medical purposes; cathodic anti-corrosion apparatus; saccharometers; salinometers; satellites for scientific purposes; oxygen transvasing apparatus; acid hydrometers: scanners [data processing equipment]; acoustic conduits; diaphragms [acoustic]; sound locating instruments; phonograph records; horns for loudspeakers; switchboards; commutators; switches, electric; communication (electric apparatus for -); integrated circuits; distribution consoles [electricity]; control panels [electricity]; time switches, automatic; printed circuits; slide callipers; marine compasses; naval signalling apparatus; mechanical signs; signs, luminous: locks, electric; fuses; crucibles [laboratory]; balances [steelyards]; coin-operated gates for car parks or parking lots; pedometers; sighting telescopes for firearms; protective suits for aviators; clothing for protection against accidents, irradiation and fire; protective helmets; protective masks; nets for protection against accidents; protection devices for personal use against accidents; electric welding apparatus; sealing plastics [electrical apparatus for -) [packaging]; water wings; swimming belts, swimming jackets; sand-glasses; transmitting sets [telecommunication]; transmitters [telecommunication]; transmitting of electronic signals; sounding leads; sounding lines; sextants; safety restraints, other than for vehicle seats and sports equipment; railway traffic safety appliances; fuse wire; electronic tags for goods; signals, luminous or mechanical; signalling panels, luminous or mechanical; wafers [silicon slices]; simulators for the steering and control of vehicles; sirens; integrated circuit cards [smart cards]; socks, electrically heated; sonars; probes for scientific purposes; solar batteries; sunglasses; battery charges; voltmeters; computer memories; spectrograph apparatus; spectroscopes; spherometers; mirrors [optic]; speaking tubes; intercommunication apparatus; sprinkler systems for fire protection; coils, electric; time clocks [time recording devices]; sockets, plugs and other contacts [electric connections]; stereoscopes; stereoscopic apparatus; actinometers; fire hose nozzles; marketing gauges [joinery]; bar code readers; ammeters; circuit breakers; electric loss indicators; converters electric; inverters [electricity]; sulphitomters; buzzers; buzzers, electric; metronomes; fuel dispensing pumps for service stations; batteries for pocketlamps; pocket calculators; electronic pocket translators; divers’ apparatus; taximeters; particle accelerators; telegraph wires; telegraphs [apparatus]; facsimile machines; range finders; telephone apparatus; telephone receivers; teleprompters; telescopes; temperature indicators; agendas (electronic -);word processors; theodolites; thermionic lamps and tubes; thermometers, not for medical purposes; thermostats; tone arms for record players; sound locating instruments; sound recording carries; totalizators; transformers [electricity]; transistors [electronic]; peepholes [magnifying lenses] for doors; door openers, electric; door closers, electric; telephone transmitters; monitoring apparatus, electric; shoes for protection against accidents, irradiation and fire; teaching apparatus; audiovisual teaching apparatus; urinometers; vacuum gauges; vacuum tubes [radio]; variometers; pressure indicator plugs for valves; connectors [electricity]; distribution machines, automatic; surveying apparatus and instruments; distribution boxes [electricity]; distribution boards [electricity]; viscosimeters; voltmeters; scales; weighing apparatus and instruments; weighing machines; voting machines; heat regulating apparatus; vehicles breakdown warning triangles; water level indicators; spirit level; intercommunication apparatus; wavemeters; resistances, electric; carpenter’ rules; protractors [measuring instruments]; rods for water diviners; counters; counters; gasoline pumps for service stations; animated cartoons; time recording apparatus; time switches, automatic; cell switches [electricity]; processors [central processing units]; sighting telescopes for firearms; cigar lighters for automobiles; compasses [measuring instruments]; batteries for lighting; cyclotrons.


Class 35: updating of advertising material; cost price analysis; business inquiries; business management and organization consultancy; business management consultancy; advisory services for business management; professional business consultancy; import-export agencies; bookkeeping; auditing; computerized file management; advertising agencies; transcription; relocation services for businesses; business investigations; drawing up of statements of accounts; tax preparation; economic forecasting; commercial information and advice for consumers; television advertising; business management of performing artists; business management of hotels; efficiency experts; photocopying; publication of statistics; publication of publicity texts; commercial or industrial management assistance; business information; payroll preparation; modeling for advertising or sales promotion; marketing research; marketing studies; business research; public relations; organization of exhibitions for commercial or advertising purposes; business organization consultancy; employment agencies; personnel recruitment; bill-posting; business management assistance; radio advertising; evaluation of standing timber; grading of wool; shop window dressing; word processing; typing; secretarial services; goods wagon position determining by computers; shorthand; systemization of information into computer databases; telephone answering for unavailable subscribers; dissemination of advertising matter; sales promotion for others; office machines and equipment rental; rental of photocopying machines; rental of advertising space; publicity material rental; arranging newspaper subscriptions for others; advertising by mail order; distribution of samples; direct mail advertising; document reproduction; publicity columns preparation; advertising; business appraisals; rental of vending machines; management of fair grounds.


Class 36: actuarial services; analysis (financial -); antique appraisal; credit cards (issuance of -); debt collection agencies; banking; pawnbrokerage; financial consultancy; insurance consultancy; stock exchange quotations; stamp appraisal; clearing, financial; loans [financing]; debit card services; deposits of valuables; securities brokerage; debt collection agencies; rent collection; factoring; fire insurance underwriting; analysis (financial -); sponsorship (financial -); financial evaluation [insurance, banking, real estate]; financing services; mutual funds; apartment house management; exchanging money; real estate management; issue of token of value; real estate appraisal; leasing of real estate; housing agents; real estate agencies; real estate management; capital investments; transfer (electronic funds -); health insurance underwriting; instalment loans; credit card services; credit bureaux; art appraisal; leasing of farms; hire-purchase financing; life insurance underwriting; mortgage banking; brokerage; rent collection; numismatic appraisal; issuing of travellers’ checks [cheques]; retirement payment services; sage deposit services; charitable fund raising; appraisal (jewellery -);check [cheque] verification; marine insurance underwriting; savings banks; organization of collections; fiscal assessments; trusteeship; accident insurance underwriting; rental of offices [real estate]; renting of flats; accommodation bureaux [apartments]; insurance brokerage; financial management; leasing of real estate; insurance information; customs brokerage.


Class 39: towing, vehicle towing; delivery of newspapers; bus transport; car rental; pleasure boat transport; transport of travellers; freighting; salvage of ships; sightseeing [tourism]; beat rental; booking of seas for travel; chauffeur services; boat storage; storage of goods; wrapping of goods; ice-breaking; unloading cargo; freight brokerage [forwarding]; carting; garage rental; porterage; refloating of ships; ambulance transport; refrigerator rental; courier services [messages or merchandise]; rental of storage containers; storage information; storage; piloting; air transport; shipbrokerage; transporting furniture; transport and storage of waste; message delivery; car parking; passenger transport; transport by pipeline; escorting of travellers; travel reservation; transport reservation; salvaging; rescue operations [transport]; transport; operating canal locks; marine transport; freight forwarding; tram transport; rental of diving suits; rental of diving bells; taxi transport; river transport; railway transport; ferry-boat transport; car transport; barge transport; hauling; boat transport; transport and storage of waste; ambulance transport; guarded transport of valuables; transportation information; air transport; transport brokerage; removal services; underwater salvages; arranging of cruises; arranging of tours; freight [shipping of goods]; pleasure boat transport; traffic information; boat rental; rental of warehouses; parking place rental; horse rental; rental of motor racing cars; rental of wheelchairs; coach rental; truck rental; packaging of goods; electricity distribution; energy (distribution of -); water distribution; water supplying; guarded transport of valuables; delivery of goods by mail order; clearing out; clearing.


Class 42: updating of computer software; architectural consultation; commercial consultancy (other than management consultancy); biological research; consultancy in the field of computer hardware; computer systems analysis; architecture; bacteriological laboratory services; chemistry services, industrial design; dress designing; packaging design; graphic arts designing; design of interior décor; physics; computer software design; chemical analysis; oil prospecting; authenticating works of art; calibration measuring; research and development for others; analysis for oil-field exploitation; oil-field surveys; geological surveys; surveying; computer programming; bacteriological research; chemical research; research in the field of genealogy; cosmetic research; technical research; mechanical research; geological research; geological prospecting; engineering; construction drafting; land surveying; material testing; testing of textile materials; physics research; technical project studies; project studies; quality control; research and development for others; urban planning; styling industrial design; oil-well testing; consultancy in the field of environmental protection; underwater exploration; rental of computer software; computer rental; rental of temporary accommodation; maintenance of computer software; material testing; weather forecasting; recovery of computer data.


The contested goods and services which have to be compared 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; coin-operated mechanisms; cash registers, calculating machines, data processing equipment and computers; recorded computer programs, downloadable computer programs, web-based computer software.


Class 35: Advertising; business management; business administration; office functions; business development; commercial information and advice for consumers; development of business and marketing strategies and concepts; services consisting of the registration, collection, transcription, compilation and systemization of data related to sale, marketing, financing and statistics; computerized file management; accounting; compilation of information into computer databases; information and consultancy services related with above services.


Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; information and consultancy services related with above services.


Class 39: Transport; packaging and storage of goods; travel arrangement.


Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; research and development of new products and services for others; design and development of computer hardware and software, including computer programming, computer system analysis, computer system and software design, electronic data storage and data back-up, updating of computer software, recovery of computer data, maintenance of computer software; rental of computer software; offering temporary access to the online computer software; creating and maintaining web sites for others; web sites developments services for others; rental of web servers; electronic archiving, recording and storage of data; information and consultancy services related with above services.


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 ‘including’, used in the applicant’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).


In its observations the applicant argues that the actual use of the ‘ShopRoller’ trade mark is to provide online services (software) to open and run an online store.


The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the lists of goods and/or services in question. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (see judgment of 16/06/2010, T-487/08, ‘Kremezin’, paragraph 71).


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


Nautical, surveying, weighing, measuring, life-saving and teaching apparatus and instruments; coin-operated mechanisms; cash registers, calculating machines, data processing equipment and computers; recorded computer programs are identically contained or overlap with terms contained in both lists of goods and services (including synonyms).


The contested scientific, photographic, cinematographic, optical, signalling, checking (supervision), apparatus and instruments include, as broader categories, or overlap with the opponent’s testing apparatus not for medical purposes; observation instruments; diagnostic apparatus, not for medical purposes; frames for photographic transparencies; centering apparatus for photographic transparencies; slide projectors; speed checking apparatus for vehicles; dog whistles; optical character readers; surveying instruments; pointers (light-emitting electronic -); satellites for scientific purposes; probes for scientific purposes; naval signalling apparatus; signals, luminous or mechanical; signalling panels. 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 apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity include, as broader categories, the opponent’s batteries for lighting; cables, electric; switchboxes [electricity]; transformers [electricity]; switches, electric; armatures [electricity]. 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 apparatus for recording, transmission or reproduction of sound or images include, as broader categories, the opponent’s receivers (audio- and video- -); television apparatus; telephone apparatus; cassette players; apparatus for magnetic tapes. 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 magnetic data carriers, recording discs include, as broader categories, the opponent’s encoded cards, magnetic; compact discs [audio-video]; compact discs [audio-video]. 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 downloadable computer programs, web-based computer software are similar to the opponent’s computer software, recorded. These goods have the same nature, purpose and producers and public than the opponent’s computer software, recorded; computer operating programs, recorded.


Contested services in Class 35


Advertising; business management; commercial information and advice for consumers; computerized file management; accounting; compilation of information into computer databases are identically contained or overlap with terms contained in both lists of goods and services (including synonyms).


The contested office functions; services consisting of the registration, collection, transcription, compilation and systemization of data related to sale, marketing, financing and statistics include, as broader categories, or overlap with the opponent’s transcription; photocopying; word processing; typing; secretarial services; shorthand; systemization of information into computer databases. 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 business administration include, as broader categories or overlap with, the opponent’s cost price analysis; business inquiries; bookkeeping; accounting; business management and organization consultancy. 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 business development; development of business and marketing strategies and concepts overlap with the opponent’s advisory services for business management; commercial or industrial management assistance; business management and organization consultancy; business management assistance. These services are considered identical.


The contested information and advisory services with above services refer to all the applicant’s services in Class 35. 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 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 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.


Contested services in Class 36


Insurance; real estate affairs are identically contained in both lists of goods and services (including synonyms).


The contested monetary affairs; financial affairs include, as broader categories or overlap with, the opponent’s banking; exchanging money; issuing of travellers’ checks [cheques]; savings banks. 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 information and consultancy services related with above services refer to all the applicant’s services in Class 36. 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 36, 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.


Contested services in Class 39


Transport; packaging and storage of goods are identically contained in both lists of goods and services.


The contested travel arrangement includes, as a broader category, the opponent’s travel reservation; arranging of cruises; arranging of tours. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.


Contested services in Class 42


The contested scientific and technological services and research and design relating thereto include, as broader categories or overlap with, the opponent’s biological research; bacteriological laboratory services; chemistry services; geological surveys. 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 industrial analysis and research services include, as broader categories or overlap with, the opponent’s engineering; construction drafting; testing of textile materials oil-field surveys. 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 research and development of new products and services for others include, as broader categories or overlap with, the opponent’s dress designing; packaging design. 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 design and development of computer hardware and software, including computer programming, computer system analysis, computer system and software design, electronic data storage and data back-up, updating of computer software, recovery of computer data, maintenance of computer software include, as broader categories, the opponent’s updating of computer software; computer system analysis, computer programming; maintenance of computer software; computer software design; recovery of computer data. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.


Rental of computer software is identically contained in both lists of goods and services.


The contested offering temporary access to the online computer software; creating and maintaining web sites for others; web sites developments services for others; rental of web servers are similar to the opponent’s updating of computer software; computer system analysis, computer programming; maintenance of computer software; recovery of computer data; rental of computer software. These services can be offered by the same undertakings and are directed at the same users.


The contested electronic archiving, recording and storage of data all consist of the management of data. These services are similar to the opponent’s computerized file management; systemization of information into computer databases in Class 35, as they serve the same purpose of organizing and storage of data in an electronic form. They are directed at the same public and interchangeable.


The contested information and consultancy services related with above 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.



  1. 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 the public at large and at professionals in various areas. The degree of attention varies from average to high.



  1. The signs


ROLLER


Earlier trade mark


Contested sign


The relevant territory is Germany.


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 single word mark. As a word mark its scope of protection covers different case letterings, which are, therefore, irrelevant to the comparison. As it is composed of one element only, there are no elements that could be considered clearly more distinctive than others.


The contested sign is a figurative mark composed of the words ‘Shop’ and ‘Roller’ in a stylized typeface. None of its elements can be considered more distinctive or dominant (visually eye-catching) than other elements.


Visually, the signs are similar to the extent that they coincide in the verbal element ‘ROLLER’. They differ in the word ‘SHOP’, only present in the contested sign and its graphic representation. None of the signs has a more dominant (eye-catching) element.


Therefore, the signs are visually similar to an average degree.


Aurally, the pronunciation of the signs coincides in the sound of the syllables /ROL-LER/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the word /SHOP/ of the contested mark which has no counterpart in the earlier sign.


Therefore, the signs are aurally similar to a high degree.


Conceptually, in German the word ‘ROLLER’ refers to a scooter, or something that rolls something else. The English word ‘Shop’ has been included in the German language (Duden Online, 21/07/2016, http://www.duden.de/rechtschreibung/Shop). It refers to a building for the retail sale of goods and services.


The applicant puts forward that the contested trade mark is semantically related to ‘running a store’ and not to ‘roller’ as a scooter. The Opposition Division is not convinced by this argument.


The German public will perceive the contested mark as a whole as a specific kind of scooter that is used in or for getting to a store and the earlier sign ‘ROLLER’ as a scooter in general. Since the word ‘Shop’ only specifies the operational area of the scooter, the signs are highly similar.


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



  1. 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.



  1. Global assessment, other arguments and conclusion


The contested goods and services are partly identical and partly similar to those of the earlier mark. The degree of attention varies from average to high. The degree of distinctiveness of the earlier mark is normal.


The signs are visually similar to an average degree and aurally similar to a high degree. The earlier mark is contained totally in the contested mark as one of its two separate and distinguishable words. More importantly, for the relevant public the marks are conceptually highly similar, as they refer to the same concept of a scooter, the contested sign specifying only its operational area. The typeface used in the contested mark (handwritten-style) and the word additional ‘Shop’ are not sufficient to tell the signs apart. Overall, the similarities outweigh the differences of the signs.


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


Therefore, the opposition is well founded on the basis of the opponent’s German trade mark No 30 120 935. It follows that the contested trade mark must be rejected for all the contested goods and services.



DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR


The opponent has invoked Article 8(1)(a) EUTMR in the present case. It must be noted that the opposition must fail insofar as it is based on this ground, because the signs are not identical, one being a single word and the other being composed of two words.



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


Beatrix STELTER

Julia SCHRADER

Dorothée SCHLIEPHAKE



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.


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