OPPOSITION No B 2 592 999

Glookast, LLC, 15712 S.W. 41st Street, Suite 10, Davie, Florida 33331, United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham, B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Gloo Networks PLC, 20 Buckingham Street, London, WC2N 6EF, United Kingdom (applicant), represented by A.A. Thornton & Co., 10 Old Bailey, London, EC4M 7NG, United Kingdom (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 592 999 is partially upheld, namely for the following contested goods and services:

Class 9: Electronic publications, downloadable; data processing apparatus; cinematographic film (exposed); computer programmes [programs] recorded, computer programs [downloadable software], computer software applications (downloadable); downloadable image files; interfaces for computers; diagnostic apparatus not for medical purposes; measures.

Class 38: Providing on-line forums; providing access to databases; streaming of data, streaming of audio material and video material on the internet; electronic bulletin board services [telecommunications services]; providing internet chatrooms; transmission of digital files.

Class 41: Providing on-line electronic publications, not downloadable; providing on-line videos, not downloadable; photographic reporting; electronic desktop publishing; layout services, other than for advertising services; news reporters services; publication of texts, other than publicity texts; publication of books; publication of electronic books and journals on-line.

Class 42: Software as a services [SaaS]; graphic arts design; providing search engines for the internet; web site design consultancy; cloud computing; rental of computer software; data conversion of computer programs and data [not physical conversion].

2. European Union trade mark application No 14 274 302 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 274 302 for the word mark ‘GLOO NETWORKS’. The opposition is based on European Union trade mark registrations No 12 578 068 for the figurative mark and No 13 365 481 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

For the sake of completeness it is noted that, in its observations of 20/02/2018, the opponent renounced the claim under Article 8(5) EUTMR in respect of the abovementioned earlier marks, as well as that under Article 8(4) EUTMR in respect of three non‑registered trade marks.

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:

European Union trade mark No 12 578 068 – earlier mark (1)

Class 9: Apparatus for recording, transmission, processing or reproduction of sound, video or images; apparatus and software for recording, transmission, processing or reproduction of sound, video or images and media management; video, audio, image and metadata (for video, audio or image), signal or file processing apparatus and software; electronic equipment, electronic networks, modules, circuit boards, integrated circuits, databases and software, all for use in the creation, management or delivery of terrestrial, cable, satellite, mobile, wireless, direct-to-home or Internet Protocol television; apparatus and software for digital audio and video workflow implementation and automation; apparatus and software for use in the asset-tracking, audio-embedding, audio de-embedding, broadcast, capture, channel-branding, closed captioning, colour-processing, communication, compression-decoding, compression-encoding, compression-transcoding, conversion, creation, cut-detection, delivery, digital rights management, display-processing, display, distribution, dropout-compensation, editing, effect-generation, encryption, exhibition, file transfer, filtering, ingest, management, mastering, motion-compensation, motion-estimation, motion-measurement, motion-prediction, noise-reduction, formatting into packages, picture-stabilisation, play-out, post-production, production, proxy-handling, publishing, recording, reframing, repurposing, restoration, retrieval, scene change detection, serializing, de-serializing, shooting, storage, sub-titling, teletext, thumb-nailing, timebase-correction, transcoding, trans-rating, watermarking, fingerprinting and weave-correction, of television, video, audio, audio-visual, film or multimedia material or content, digital intermediates thereof, or metadata associated therewith; apparatus and software for the analysis, communication, conversion, formatting, generation, mapping, modification, playing, processing, storage, synchronisation, transmission, wrapping or unwrapping of television, video, audio, film, picture, test, multimedia, composite, components, SDI, MPEG, JPEG, metadata, MXF, or AAF signals, files or formats.

Class 41: Video editing; audio editing; information, advisory and consultancy services relating to the aforesaid services.

Class 42: Software design and development; computer hardware design and development; software engineering; computerised processing of audio or video signals; reproduction of video signals either live or in the form of recordings on all media; computerised post-processing; information, advisory and consultancy services relating to the aforesaid services.

European Union trade mark No 13 365 481 – earlier mark (2)

Class 9: Digital audio and video software and hardware products for professional applications, namely, digital media servers, computer software for recording, ingesting and processing audio and video content; digital media players, namely, digital audio and video file-based players; digital media recorders, namely, digital audio and video file-based recorders; digital media converters and transcoders, namely, digital audio and video format converters and transcoders; computer hardware and software for media asset management and tracking, namely, digital media storage servers, computer software for indexing, sorting, tagging and searching audio and video content; computer software for compressing/decompressing digital audio and video files; computer software for decoding/encoding, wrapping, trans-wrapping, and scaling digital audio and video files; computer software for automatically controlling multiple digital media servers, namely, digital media players, digital media recorders, digital media converters, digital media transcoders, digital media indexers, digital media trackers, digital media processors.

Class 42: Custom software application design and development services; engineering services; computer software and hardware development services.

The contested goods and services are the following:

Class 9: Electronic publications, downloadable; data processing apparatus; cinematographic film (exposed); computer programmes [programs] recorded, computer programs [downloadable software], computer software applications (downloadable); downloadable image files; interfaces for computers; diagnostic apparatus not for medical purposes; measures.

Class 16: Magazines [periodicals], newsletters, newspapers, periodicals, printed matter, printed publications; advertisement boards of paper and cardboard; books, catalogues; teaching materials [except apparatus].

Class 35: Advertising; compilation of information into computer databases; compilation of statistics; direct mail advertising; distribution of samples; provision of an on-line marketplace for buyers and sellers of goods and services; modelling for advertising or sales promotion; pay per click advertising; the bringing together, for the benefits of others, of a variety of services enabling customers to conveniently view and choose those services from an Internet website specialising in the provision of financial, insurance, automotive, travel, health and telecommunications related services; information, advisory and consultancy services relating to the aforesaid services; publicity; rental of advertising space; production of advertising films; business research; business information; providing business information via a web site; commercial information and advices for consumers (consumer advice shop); provision of commercial and business contact information; design of advertising material; dissemination of advertising matter; economic forecasting; layout services for advertising purposes; on-line advertising on a computer network; marketing studies; marketing research; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; price comparison services; publication of publicity texts; sales promotion for others; rental of sales stands; search engine optimisation; updating and maintenance of data in computer databases; writing of publicity texts.

Class 36: Charitable fund raising; providing financial information via a web site; insurance brokerage.

Class 38: Providing on-line forums; providing access to databases; streaming of data, streaming of audio material and video material on the internet; electronic bulletin board services [telecommunications services]; providing internet chatrooms; transmission of digital files.

Class 39: Delivery of goods by mail order; delivery of newspapers, newspaper delivery.

Class 41: Ticket agency services [entertainment]; providing on-line electronic publications, not downloadable; providing on-line videos, not downloadable; photographic reporting; booking of seats for shows; arranging and conducting conferences; arranging and conducting of congresses; electronic desktop publishing; layout services, other than for advertising services; news reporters services; organisation of exhibitions for cultural or educational purposes; publication of texts, other than publicity texts; publication of books; publication of electronic books and journals on-line; arranging and conducting of seminars; arranging and conducting of workshops [training].

Class 42: Software as a services [SaaS]; graphic arts design; providing search engines for the internet; web site design consultancy; cloud computing; rental of computer software; data conversion of computer programs and data [not physical conversion].

An interpretation of the wording of the opponent’s 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 to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 9

The contested data processing apparatus includes, as a broader category, the opponent’s apparatus for processing sound, video or images of earlier mark (1). 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 programmes [programs] recorded, computer programs [downloadable software], computer software applications (downloadable) overlap with the opponent’s computer software for media asset management and tracking, namely, computer software for indexing, sorting, tagging and searching audio and video content of earlier mark (2). Therefore, they are identical.

The contested electronic publications, downloadable; cinematographic film (exposed); downloadable image files are similar to the opponent’s software for recording, transmission, processing or reproduction of sound, video or images and media management of earlier mark (1), as these goods usually originate from the same undertakings, target the same relevant public and have the same distribution channels. Furthermore, they are complementary.

‘Interfaces for computers’ are shared boundaries across which separate components of systems may exchange information. These interfaces are likely to either consist of or at least include software elements. The contested interfaces for computers and the opponent’s computer software for media asset management and tracking, namely, computer software for indexing, sorting, tagging and searching audio and video content of earlier mark (2) have certain similarities in their natures, purposes and methods of use. They can have the same producers and distribution channels. Therefore, they are at least similar.

The contested diagnostic apparatus not for medical purposes is used to identify the nature or cause of a certain phenomenon. Consequently, these goods are at least similar to the opponent’s apparatus for use in the cut‑detection of television, video, audio, audio-visual, film or multimedia material or content, digital intermediates thereof, or metadata associated therewith of earlier mark (1). These goods have the same general purpose. Furthermore, they can have the same producers, relevant public and distribution channels.

The contested measures are measuring instruments. Consequently, these goods are at least similar to the opponent’s apparatus for use in the motion‑measurement of television, video, audio, audio-visual, film or multimedia material or content, digital intermediates thereof, or metadata associated therewith of earlier mark (1). These goods have the same general purpose. Furthermore, they can have the same producers, relevant public and distribution channels.

Contested goods in Class 16

The contested magazines [periodicals], newsletters, newspapers, periodicals, printed matter, printed publications; advertisement boards of paper and cardboard; books, catalogues; teaching materials [except apparatus] are dissimilar to all the opponent’s goods and services in Classes 9, 41 and 42. These goods and services have different natures and purposes. They do not originate from the same undertakings and they do not have the same distribution channels. Furthermore, they are not complementary or in competition.

The opponent claims that these contested goods are similar or identical to some of the goods and services in Classes 9 and 41 of the earlier marks, since they could be complementary.

Goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). In the present case, however, the Opposition Division considers that this criterion is not met. Furthermore, complementarity is not usually conclusive on its own for a finding of similarity between goods and/or services. Even where a degree of complementarity exists, goods and/or services may be dissimilar. Therefore, the finding of dissimilarity is maintained.

Contested services in Class 35

The contested advertising; compilation of information into computer databases; compilation of statistics; direct mail advertising; distribution of samples; provision of an on-line marketplace for buyers and sellers of goods and services; modelling for advertising or sales promotion; pay per click advertising; the bringing together, for the benefits of others, of a variety of services enabling customers to conveniently view and choose those services from an Internet website specialising in the provision of financial, insurance, automotive, travel, health and telecommunications related services; information, advisory and consultancy services relating to the aforesaid services; publicity; rental of advertising space; production of advertising films; business research; business information; providing business information via a web site; commercial information and advices for consumers (consumer advice shop); provision of commercial and business contact information; design of advertising material; dissemination of advertising matter; economic forecasting; layout services for advertising purposes; on-line advertising on a computer network; marketing studies; marketing research; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; price comparison services; publication of publicity texts; sales promotion for others; rental of sales stands; search engine optimisation; updating and maintenance of data in computer databases; writing of publicity texts are, in general, advertising, business‑related, commercial trading and consumer information services. These services have nothing relevant in common with the opponent’s goods and services in Classes 9, 41 and 42. These goods and services have different natures and purposes. They do not originate from the same undertakings and they do not have the same distribution channels. Furthermore, they are not complementary or in competition.

The opponent claims that these contested services are similar or identical to some of the goods and services in Classes 9 and 42 of the earlier marks, since they could be complementary.

The Opposition Division refers to the considerations set forth above in respect of that factor for a finding of similarity (i.e. complementarity) and considers that the contested services in Class 35 are dissimilar to all the opponent’s goods and services.

Contested services in Class 36

The contested charitable fund raising; providing financial information via a web site; insurance brokerage are very specific services that have nothing relevant in common with the opponent’s goods and services in Classes 9, 41 and 42. These goods and services have different natures and purposes. They do not originate from the same undertakings and they do not have the same distribution channels. Furthermore, they are not complementary or in competition.

The opponent claims that these contested services are similar or identical to some of the services in Class 42 of the earlier marks, since they could be complementary.

The Opposition Division refers to the considerations set forth above in respect of that factor for a finding of similarity (i.e. complementarity) and considers that the contested services in Class 36 are dissimilar to all the opponent’s goods and services.

Contested services in Class 38

The contested providing on-line forums; providing access to databases; streaming of data, streaming of audio material and video material on the internet; electronic bulletin board services [telecommunications services]; providing internet chatrooms; transmission of digital files fall within the category of computer communication and internet access. Consequently, these services are similar to the opponent’s apparatus for processing of sound, video or images in Class 9 of earlier mark (1), since they have the same general purpose. They usually target the same relevant public and have the same distribution channels. Furthermore, they are complementary.

Contested services in Class 39

The contested delivery of goods by mail order; delivery of newspapers, newspaper delivery are very specific services that have nothing relevant in common with the opponent’s goods and services in Classes 9, 41 and 42. These goods and services have different natures and purposes. They do not originate from the same undertakings and they do not have the same distribution channels. Furthermore, they are not complementary or in competition.

The opponent claims that these contested services are similar to some of the goods in Class 9 of the earlier marks, since they could be complementary.

The Opposition Division refers to the considerations set forth above in respect of that factor for a finding of similarity (i.e. complementarity) and considers that the contested services in Class 38 are dissimilar to all the opponent’s goods and services.

Contested services in Class 41

The contested providing on-line electronic publications, not downloadable; providing on-line videos, not downloadable; photographic reporting; electronic desktop publishing; layout services, other than for advertising services; news reporters services; publication of texts, other than publicity texts; publication of books; publication of electronic books and journals on-line belong to the general category of publishing and reporting and are highly similar to the opponent’s video editing; audio editing of earlier mark (1), since they have the same general purpose. They usually have the same providers and distribution channels. Furthermore, they target the same relevant public.

The contested ticket agency services [entertainment]; booking of seats for shows are, however, very specific services that have nothing relevant in common with the opponent’s goods and services in Classes 9, 41 and 42. These goods and services have different natures and purposes. They do not originate from the same undertakings and they do not have the same distribution channels. Furthermore, they are not complementary or in competition. The same reasoning applies to the contested arranging and conducting conferences; arranging and conducting of congresses; organisation of exhibitions for cultural or educational purposes; arranging and conducting of seminars; arranging and conducting of workshops [training].

The opponent claims that these contested services are identical or similar to some of the services in Class 42 of the earlier marks, since they could be complementary.

The Opposition Division refers to the considerations set forth above in respect of that factor for a finding of similarity (i.e. complementarity) and considers that these contested services are dissimilar to all the opponent’s goods and services.

Contested services in Class 42

The contested graphic arts design is similar to the opponent’s software design of earlier mark (1), as they have the same nature. They can have the same providers, distribution channels and relevant public.

The contested web site design consultancy is similar to the opponent’s consultancy services relating to software design of earlier mark (1), as they have the same nature. They can have the same providers, distribution channels and relevant public.

The contested rental of computer software is similar to the opponent’s software design and development of earlier mark (1), as they usually have the same providers and distribution channels. Furthermore, they target the same relevant public.

The contested software as a service [SaaS] is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. The contested cloud computing is a type of computing that relies on sharing computing resources rather than having local servers or personal devices to handle applications. It is a type of internet-based computing where various services — such as the use of servers, storage and applications — are delivered to an organisation’s computers and devices through the internet. The aforementioned contested services, as well as the contested providing search engines for the internet and data conversion of computer programs and data [not physical conversion], cannot be rendered without the opponent’s software design and development of earlier mark (1) and therefore these services are complementary. Accordingly, they may target the same consumers, may be provided by the same undertakings and are likely to be distributed through the same channels. Therefore, these services are similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Earlier mark (1) Earlier mark (2)	GLOO NETWORKS
Earlier trade marks	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 contested sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper or lower case letters, or in a combination thereof.

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.

All the signs contain some English words; these are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as this is the scenario in which a likelihood of confusion would be most likely to arise.

The expression ‘solving the workflow puzzle’ of earlier mark (1) is meaningful in English and it will be perceived by the relevant public as a promotional message because it provides information about the goods and services in question (i.e. that they provide solutions). Furthermore, this expression is in a clearly secondary position within the sign and is much smaller than the rest of the elements. Therefore, the distinctive character of this expression is very limited, as is its impact on the overall impression created by the sign.

The element ‘glookast’ of earlier mark (1) is meaningless and therefore distinctive.

Earlier mark (1) also contains a figurative element depicting a piece of a puzzle set against a black background. This element is not directly related to the goods and services in question and is therefore distinctive. However, 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).

Earlier mark (2), ‘gloobox’, is meaningless as a whole. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case, the relevant public will undoubtedly recognise the element ‘box’, firstly because it is an English word and, secondly, because it is depicted in green, contrasting with the preceding black element ‘gloo’. The word ‘box’ is not directly related to the goods and services in question and is therefore distinctive; the element ‘gloo’ is meaningless and therefore also distinctive.

The word ‘network’ has several meanings in English. For instance, it refers to a system of things or people that are connected to each other, to a broadcasting company or group and also to an activity that involves trying to meet new people and make new connections. Depending on the relevant goods and services, the element ‘networks’ of the contested sign either is non-distinctive (e.g. for most of the IT-related goods and services, as they frequently involve the operation of a network) or, for the remaining goods and services, has a lower than average degree of distinctive character, as, for these goods and services, it implies that they have some kind of connectivity/connection or work together.

As stated above, the element ‘gloo’ of the contested sign is meaningless and therefore distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the letters ‘gloo’, present identically at the beginning of all the signs. However, they differ in the additional letters ‘kast’ of earlier mark (1), ‘box’ of earlier mark (2) and ‘networks’ of the contested sign. Furthermore, the signs differ in the expression ‘solving the workflow puzzle’ of earlier mark (1), which is clearly secondary, and in the figurative element of earlier mark (1), which has a limited impact, as explained above. The typeface in which the earlier marks are written is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the elements it embellishes. In addition, the green colour of the letters ‘box’ in earlier mark (2) will lead consumers to identify two separate elements, ‘gloo’ and ‘box’.

Therefore, taking into account the above considerations, as well as the distinctive character of the elements of the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable ‛gloo’, present identically at the beginning of all the signs. The pronunciation differs in the syllables ‛kast’ of earlier mark (1) and ‘box’ of earlier mark (2) and in the additional word ‘networks’ of the contested sign, which will be pronounced in two syllables. Although these additional elements are of different lengths, the fact remains that, when pronounced, they have a similar rhythm, as they all have very similar endings, namely /st/, /x/ and /ks/. Furthermore, although earlier mark (1) also contains the expression ‘solving the workflow puzzle’, this expression is not likely to be pronounced by the relevant public for the reasons given above.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the meanings of some of the elements of the earlier marks, as explained above, and, although the element ‘networks’ of the contested sign will also be understood, it either is non‑distinctive or has a lower than average degree of distinctive character, and therefore its impact is limited. Consequently, since the remaining element of the contested sign, ‘gloo’, will not be associated with any meaning, the signs are not conceptually similar.

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 marks

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 marks as a whole are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of some elements of very limited distinctive character in earlier mark (1), 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. 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public is made up of the public at large and business customers; the degree of attention varies from average to high. The earlier marks have a normal degree of distinctiveness.

The signs are visually similar to an average degree and aurally highly similar. Indeed, the beginnings of the signs play an important role in the present case, since all the signs have the letters ‘gloo’ at their beginning. Furthermore, these letters form the entire first element of the contested sign, which is more distinctive than the other element of the sign, ‘networks’, which either is non‑distinctive or has a lower than average degree of distinctive character, as explained above. The conflicting signs are not conceptually similar.

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 undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is particularly likely in the case of earlier mark (2) and the contested sign, as the former is made up of two elements that are clearly identifiable due to their different colours (i.e. ‘gloo’ in black and ‘box’ in green). In earlier mark (2), ‘gloo’ is a fanciful word and ‘box’ is an English word, which is similar to the contested sign, where ‘gloo’ is a fanciful word and ‘networks’ is an English word. Consequently, the similar structures of these conflicting signs will lead consumers, even those displaying a high degree of attention, to perceive the contested sign as a variation of earlier mark (2).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English‑speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks.

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

For the sake of completeness, it is noted that there is no need to consider the opponent’s arguments and evidence submitted in relation to the existence of a ‘family of marks’, as the question of the likelihood of association between the contested sign and the earlier marks has already been considered. Even if the existence of a family of marks containing the element ‘gloo’ had been proven, the requirement for similarity between the goods and services, which is necessary to uphold an opposition under Article 8(1)(b)EUTMR, would still not have been met. Therefore, the result would be the same even if the Office had found the opponent’s arguments for the existence of a family of marks to be well founded.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Vita VORONECKAITE

Marta GARCÍA COLLADO

Chantal VAN RIEL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.