OPPOSITION No B 2 603 440

Geobyte Software GmbH, Kupferstrasse 36, 70565 Stuttgart, Germany (opponent), represented by BRP Renaud und Partner mbB, Königstr. 28, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Metropolee Technologies International Limited, Bond House, Merchants Quay, Dublin 8, Ireland (applicant), represented by Mark F. Newman, 8 South Great George’s Street, Dublin 2, Ireland (professional representative).

On 20/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 603 440 is partially upheld, namely for the following contested goods and services:

Class 9: Computers; software; communication software; application software; interface software; education software; community software; bios software; bioinformatics software; downloadable software; computer software; table representation software; data processing software; data communications software; factory automation software; computer software packages; computer telephony software; virtual reality software; interactive computer software; process controlling software; computer interface software; computer software platforms; financial management software; website development software; integrated software packages; embedded operating software; database management software; computer application software; software for computers; computer software [programmes]; computer software programs; credit screening software; computer programs [downloadable software]; industrial controls incorporating software; computer e-commerce software; communications processing computer software; software for card readers; computer software applications, downloadable; computer software for encryption; computer software for document management; computer software for database management; computer software for time control; application software for mobile phones; application software for wireless devices; software for diagnostics and troubleshooting; computer software relating to financial history; computer software downloaded from the internet; computer software for analysing market information; computer software for processing market information; computer software designed to estimate costs; computer software for producing financial models; application software for cloud computing services; computer software for wireless content delivery; software for facilitating secure credit card transactions; communication software for connecting global computer networks; communication software for connecting computer network users; software applications for use with mobile devices; computer software for application and database integration; computer software for controlling self-service terminals; computer software to enable the searching of data; software for commerce over a global communications network; downloadable computer software for remote monitoring and analysis; personal computer application software for managing document control systems; computer software for use in creating and designing websites; computer software for inter-network accounting in the telecommunications field; computer programmes for use in telecommunications; computer programmes relating to financial matters; computer programmes.

Class 42: Programming (computer -); computer consultancy; computer engineering; software development; software design; software engineering; software research; software installation; software creation; software authoring; software customisation services; computer software integration; development of software; design of software; software design (computer -); updating of software; computer software engineering; computer software research; computer software maintenance; maintenance of software; software maintenance services; installation of software; software consulting services; software consultancy services; consultancy (computer software -); rental of software; computer software installation; software development services; developing computer software; computer software design; computer software consultancy; computer software consultation; programming of educational software; software design for others; computer software design services; software (updating of computer -); development of computer software; computer software rental services; configuration of computer software; computer software maintenance services; computer software programming services; computer software advisory services; programming of telecommunications software; testing of computer software; software design and development; computer software design and development; computer hardware and software consultancy; custom design of software packages; services for designing computer software; developing computer software for others; computer and software consultancy services; software as a service [saas]; consultancy relating to computer software; software development, programming and implementation; computer programming and software design; computer software design for others; computer software installation and maintenance; writing and updating computer software; computer hardware and software consulting services; professional consultancy relating to computer software; quality control relating to computer software; creation, maintenance and adaptation of software; advisory services relating to computer software; consultation services relating to computer software; programming of software for database management; programming of software for inventory management; rental of software for inventory management; rental of software for website development; programming of software for website development; updating and design of computer software; design and development of computer software; installation and maintenance of computer software; advisory services relating to computer software design; conducting feasibility studies relating to computer software; services for the writing of computer software; consultancy in the field of computer software; design, updating and maintenance of computer software; providing temporary use of web-based software; programming of software for e-commerce platforms; consultancy relating to software for communication systems; design, development and programming of computer software; software engineering services for data processing programs; consultancy in the field of software design; design, drawing and commissioned writing of computer software; design, maintenance and up-dating of computer software; consultancy and information services relating to software rental; research, development, design and upgrading of computer software; advisory services relating to the use of computer software; services for the design of electronic data processing software; providing temporary use of online non-downloadable investment software; consultancy and information services relating to computer software design; design and development of software for importing and managing data; design and development of computer software for supply chain management; design of computer machine and computer software for commercial analysis and reporting; creation of computer programmes for data processing; development of computer programmes; preparation of reports relating to computer programmes.

Class 45: Software licensing; computer software licensing; licensing of software; licensing of computer software; granting of software licences; software licensing [legal services]; granting of software licenses; computer software licensing [legal services]; licensing of software [legal services]; granting of software licenses [legal services]; granting of software licences [legal services]; consultancy relating to computer software licensing; licensing of computer software [legal services].

2. European Union trade mark application No 14 460 621 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 460 621 in Classes 9, 41, 42 and 45. The opposition is based on European Union trade mark registration No 10 509 032. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 9: Data-processing apparatus; computers; computer operating programs (recorded); computer peripheral devices; computer software (recorded or downloadable); none of the aforesaid goods in relation to games.

Class 38: Telecommunications; providing access to a worldwide computer network; providing access to computer programs on data networks; electronic mail services; electronic mail; on-line bidding, namely transmission of information, texting, drawings and images and computer programs; none of the aforesaid services in relation to games.

Class 42: Computer programming; design and development of computer hardware and software; software engineering; computer software consulting; consultancy in the field of computers; computer programming; installation and maintenance of software; gathering, provision of computer programs; none of the aforesaid services in relation to games.

The contested goods and services are the following:

Class 9: Computers; software; communication software; application software; interface software; education software; community software; bios software; bioinformatics software; downloadable software; computer software; table representation software; data processing software; data communications software; factory automation software; computer software packages; computer telephony software; virtual reality software; interactive computer software; process controlling software; computer interface software; computer software platforms; financial management software; website development software; integrated software packages; embedded operating software; database management software; computer application software; software for computers; computer software [programmes]; computer software programs; credit screening software; computer programs [downloadable software]; industrial controls incorporating software; computer e-commerce software; communications processing computer software; software for card readers; computer software applications, downloadable; computer software for encryption; computer software for document management; computer software for database management; computer software for time control; application software for mobile phones; application software for wireless devices; software for diagnostics and troubleshooting; computer software relating to financial history; computer software downloaded from the internet; computer software for analysing market information; computer software for processing market information; computer software designed to estimate costs; computer software for producing financial models; application software for cloud computing services; computer software for wireless content delivery; software for facilitating secure credit card transactions; communication software for connecting global computer networks; communication software for connecting computer network users; software applications for use with mobile devices; computer software for application and database integration; computer software for controlling self-service terminals; computer software to enable the searching of data; software for commerce over a global communications network; downloadable computer software for remote monitoring and analysis; personal computer application software for managing document control systems; computer software for use in creating and designing websites; computer software for inter-network accounting in the telecommunications field; computer programmes for use in telecommunications; computer programmes relating to financial matters; computer programmes.

Class 41: Computer training; training relating to computer software; education services relating to computer software; training services relating to computer software; training in the operation of software systems; training in the development of software systems; training in the design of software systems; education services relating to the application of computer software; training services concerned with the use of computer software; training services in the field of computer software development; training relating to computer programmes.

Class 42: Programming (Computer -); computer consultancy; computer engineering; software development; software design; software engineering; software research; software installation; software creation; software authoring; software customisation services; computer software integration; development of software; design of software; software design (computer -); updating of software; computer software engineering; computer software research; computer software maintenance; maintenance of software; software maintenance services; installation of software; software consulting services; software consultancy services; consultancy (computer software -); rental of software; computer software installation; software development services; developing computer software; computer software design; computer software consultancy; computer software consultation; programming of educational software; software design for others; computer software design services; software (updating of computer -); development of computer software; computer software rental services; configuration of computer software; computer software maintenance services; computer software programming services; computer software advisory services; programming of telecommunications software; testing of computer software; software design and development; computer software design and development; computer hardware and software consultancy; custom design of software packages; services for designing computer software; developing computer software for others; computer and software consultancy services; software as a service [saas]; consultancy relating to computer software; software development, programming and implementation; computer programming and software design; computer software design for others; computer software installation and maintenance; writing and updating computer software; computer hardware and software consulting services; professional consultancy relating to computer software; quality control relating to computer software; creation, maintenance and adaptation of software; advisory services relating to computer software; consultation services relating to computer software; programming of software for database management; programming of software for inventory management; rental of software for inventory management; rental of software for website development; programming of software for website development; updating and design of computer software; design and development of computer software; installation and maintenance of computer software; advisory services relating to computer software design; conducting feasibility studies relating to computer software; services for the writing of computer software; consultancy in the field of computer software; design, updating and maintenance of computer software; providing temporary use of web-based software; programming of software for e-commerce platforms; consultancy relating to software for communication systems; design, development and programming of computer software; software engineering services for data processing programs; consultancy in the field of software design; design, drawing and commissioned writing of computer software; design, maintenance and up-dating of computer software; consultancy and information services relating to software rental; research, development, design and upgrading of computer software; advisory services relating to the use of computer software; services for the design of electronic data processing software; providing temporary use of online non-downloadable investment software; consultancy and information services relating to computer software design; design and development of software for importing and managing data; design and development of computer software for supply chain management; design of computer machine and computer software for commercial analysis and reporting; creation of computer programmes for data processing; development of computer programmes; preparation of reports relating to computer programmes.

Class 45:Software licensing; computer software licensing; licensing of software; licensing of computer software; granting of software licences; software licensing [legal services]; granting of software licenses; computer software licensing [legal services]; licensing of software [legal services]; granting of software licenses [legal services]; granting of software licences [legal services]; consultancy relating to computer software licensing; licensing of computer software [legal services].

An interpretation of the wording of the applicant’s and the opponent’s lists 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 computers; software; communication software; application software; interface software; education software; community software; bios software; bioinformatics software; downloadable software; computer software; table representation software; data processing software; data communications software; factory automation software; computer software packages; computer telephony software; virtual reality software; interactive computer software; process controlling software; computer interface software; computer software platforms; financial management software; website development software; integrated software packages; embedded operating software; database management software; computer application software; software for computers; computer software [programmes]; computer software programs; credit screening software; computer programs [downloadable software]; industrial controls incorporating software; computer e-commerce software; communications processing computer software; software for card readers; computer software applications, downloadable; computer software for encryption; computer software for document management; computer software for database management; computer software for time control; application software for mobile phones; application software for wireless devices; software for diagnostics and troubleshooting; computer software relating to financial history; computer software downloaded from the internet; computer software for analysing market information; computer software for processing market information; computer software designed to estimate costs; computer software for producing financial models; application software for cloud computing services; computer software for wireless content delivery; software for facilitating secure credit card transactions; communication software for connecting global computer networks; communication software for connecting computer network users; software applications for use with mobile devices; computer software for application and database integration; computer software for controlling self-service terminals; computer software to enable the searching of data; software for commerce over a global communications network; downloadable computer software for remote monitoring and analysis; personal computer application software for managing document control systems; computer software for use in creating and designing websites; computer software for inter-network accounting in the telecommunications field; computer programmes for use in telecommunications; computer programmes relating to financial matters; computer programmes are identical to the opponent’s computer software (recorded or downloadable) not in relation to games, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in or overlap with the contested goods.

Contested services in Class 41

The contested computer training; training relating to computer software; education services relating to computer software; training services relating to computer software; training in the operation of software systems; training in the development of software systems; training in the design of software systems; education services relating to the application of computer software; training services concerned with the use of computer software; training services in the field of computer software development; training relating to computer programmes are dissimilar to all the opponent’s goods and services in Classes 9, 38 and 42. These goods and services (such as the opponent’s computers; computer peripheral devices; software and telecommunications services; computer programming; design and development of computer hardware and software; software engineering versus the contested education and training services) have different natures, different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels.

Contested services in Class 42

The contested programming (computer -); computer consultancy; computer engineering; software development; software design; software engineering; software research; software installation; software creation; software authoring; software customisation services; computer software integration; development of software; design of software; software design (computer-); updating of software; computer software engineering; computer software research; computer software maintenance; maintenance of software; software maintenance services; installation of software; software consulting services; software consultancy services; consultancy (computer software-); computer software installation; software development services; developing computer software; computer software design; computer software consultancy; computer software consultation; programming of educational software; software design for others; computer software design services; software (updating of computer -); development of computer software; configuration of computer software; computer software maintenance services; computer software programming services; computer software advisory services; programming of telecommunications software; testing of computer software; software design and development; computer software design and development; computer hardware and software consultancy; custom design of software packages; services for designing computer software; developing computer software for others; computer and software consultancy services; software as a service [saas]; consultancy relating to computer software; software development, programming and implementation; computer programming and software design; computer software design for others; computer software installation and maintenance; writing and updating computer software; computer hardware and software consulting services; professional consultancy relating to computer software; creation, maintenance and adaptation of software; advisory services relating to computer software; consultation services relating to computer software; programming of software for database management; programming of software for inventory management; programming of software for website development; updating and design of computer software; design and development of computer software; installation and maintenance of computer software; advisory services relating to computer software design; conducting feasibility studies relating to computer software; services for the writing of computer software; consultancy in the field of computer software; design, updating and maintenance of computer software; providing temporary use of web-based software; programming of software for e-commerce platforms; consultancy relating to software for communication systems; design, development and programming of computer software; software engineering services for data processing programs; consultancy in the field of software design; design, drawing and commissioned writing of computer software; design, maintenance and up-dating of computer software; research, development, design and upgrading of computer software; advisory services relating to the use of computer software; services for the design of electronic data processing software; providing temporary use of online non-downloadable investment software; consultancy and information services relating to computer software design; design and development of software for importing and managing data; design and development of computer software for supply chain management; design of computer machine and computer software for commercial analysis and reporting; creation of computer programmes for data processing; development of computer programmes; preparation of reports relating to computer programmes are identical to the opponent’s computer programming; design and development of computer hardware and software; software engineering; computer software consulting; consultancy in the field of computers; computer programming; installation and maintenance of software; gathering, provision of computer programs; none of the aforesaid services in relation to games, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested rental of software; computer software rental services; rental of software for inventory management; rental of software for website development; consultancy and information services relating to software rental are closely connected with the opponent’s telecommunications in Class 38, as they have the same purpose. These services are complementary because telecommunication services may be essential for the provision of software rental services. Furthermore, providers of the opponent’s services are likely to provide rental services as an alternative to purchasing the goods (software). Moreover, these services are provided through the same distribution channels. Therefore, the contested rental services of computer software and consultancy and information services relating to software rental that can be provided before and/or during the rental of software are similar to the opponent’s telecommunication services in Class 38.

The contested quality control relating to computer software and the opponent’s software engineering (not related to games) are closely related, since quality control services are usually an integral part of software design in the software development process conducted by software engineers, who verify the compliance of the software created with its specified baseline requirements, for example through testing. Therefore, these services are provided by the same undertakings, through the same channels, and they target the same public. They are also strongly connected as regards their natures and purposes, and methods of use. Moreover, they are complementary to each other. Consequently, these services are similar.

Contested services in Class 45

The contested software licensing; computer software licensing; licensing of software; licensing of computer software; granting of software licences; software licensing [legal services]; granting of software licenses; computer software licensing [legal services]; licensing of software [legal services]; granting of software licenses [legal services]; granting of software licences [legal services]; consultancy relating to computer software licensing; licensing of computer software [legal services] are closely related to the opponent’s computer software (recorded; not in relation to games) in Class 9. It is apparent that these goods and services are complementary because licensing is a common way of marketing software. A licence is issued to someone who buys computer software by the publisher – the company that develops and markets the software – and states the conditions under which the software may be used. These goods and services can also have the same producer/provider and can target the same consumers. Therefore, they are similar.

2. Relevant public — degree of attention

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

In the present case, the goods in Class 9 and the services in Classes 42 and 45 found to be identical or similar are mostly directed at a specialised public with specific professional knowledge or expertise in the field of software engineering/development, but they may also target the public at large (e.g. computer software and software licensing). The degree of attention may vary from average to high, depending on the price and the type or level of technological advancement of the goods (software) and related services (software engineering/development).

3. The signs

METROPOLY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 English-speaking part of the relevant public.

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 word mark, ‘METROPOLY’.

The contested sign is a figurative mark that consists of the words ‘METROPOLEE’ in upper case letters and ‘Technologies’ in title case letters, both in a standard font in teal blue. The word ‘Technologies’ is much smaller than the word ‘METROPOLEE’ and is placed beneath it; to the left is a device resembling four highly stylised skyscrapers of different heights and in different colours: red, green, yellow and blue.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

As regards the contested sign, the figurative element resembling the four skyscrapers in different colours and the word ‘METROPOLEE’ in teal blue are, together, the dominant elements by virtue of their size, since the word ‘Technologies’ in this sign is clearly smaller than them.

The word ‘Technologies’ of the contested sign will be associated by the English-speaking public with its clear meaning (the plural of technology; ‘The application of scientific knowledge for practical purposes, especially in industry’, information extracted from Oxford English Dictionary online at http://www.oxforddictionaries.com/definition/english/technology?q=technologies). Bearing in mind that the relevant goods in Class 9 are computer software and the services are, inter alia, programming; software development; design and development of computer software; installation and maintenance of computer software; advisory services relating to computer software design; software research; computer software consultancy; and computer software consultation in Class 42 and, for example, software licensing in Class 45, this element is considered non-distinctive for all the contested goods and services in Classes 9, 42 and 45.

Visually, the signs coincide in the letter sequence ‘METROPOL**’. However, they differ in their final letters, ‘Y’ in the earlier mark and the double letter ‘E’ in the contested sign. The contested sign includes an additional word, ‘Technologies’, not present in the earlier mark. Therefore, the signs differ in their number of words: one in the earlier mark and two in the contested sign.

The signs also differ in the figurative element depicting four skyscrapers in different colours (red, green, yellow and blue) and of different heights.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts, ‘METROPOL**’, of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

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

Aurally, the pronunciation of the signs from the perspective of the English-speaking public coincides in the word ‘ME-TRO-PO-L(Y)/(EE)’, as this word will be pronounced identically in the signs. Nevertheless, the pronunciation differs in the word ‘Technologies’ of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, considering the verbal elements of the signs, ‘METROPOLY’ and ‘METROPOLEE Technologies’, neither of the signs has a meaning for part of the English-speaking public, since they are invented words. Nevertheless, a significant part of the English-speaking public may perceive the earlier mark as meaningful.

The vast majority of the English-speaking public will associate the earlier mark, ‘METROPOLY’, with the concept of ‘metropolis’: ‘1.The capital or chief city of a country or region’, ‘A very large and busy city’ (information extracted from Oxford English Dictionary online at http://www.oxforddictionaries.com/definition/english/metropolis).

As regards the contested sign, for the vast majority of the English-speaking public, the verbal element ‘METROPOLEE’ is meaningless. The other word of this sign, ‘Technologies’, will be associated with its clear meaning (see the dictionary reference above).

Therefore, the signs are conceptually dissimilar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

As seen above, all of the contested goods are identical and some of the contested services are identical, similar or dissimilar to the opponent’s goods and services. The relevant goods target the public at large and/or a specialist public in the field of software engineering/development, whose degree of attention will vary from average to high.

The opponent did not claim that its earlier mark had acquired an enhanced degree of distinctiveness for the goods and services at issue. Therefore, the earlier mark possesses a normal degree of distinctiveness.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs, ‘METROPOLY’ and ‘METROPOLEE Technologies’, are visually and aurally similar to an average degree. Nevertheless, from the perspective of the relevant English-speaking public, the coincidence in the pronunciation of the verbal element ‘ME-TRO-PO-L(Y)/(EE)’ will have a significant influence on the overall impressions created by the signs, particularly taking into account that the word ‘Technologies’ is a non-distinctive and non-dominant element of the contested sign.

The signs are conceptually dissimilar, since the vast majority of the relevant public will associate the earlier mark with the concept of ‘metropolis’, while the first verbal element of the contested sign, ‘METROPOLEE’, will be meaningless for this public. The other element of the contested sign, namely the word ‘Technologies’, is a secondary element from a visual point of view due to its size and, furthermore, it is non-distinctive for all the contested goods and services. Therefore, it will be disregarded by most consumers, whose attention will, instead, be drawn by the co-dominant element ‘METROPOLEE’.

Account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the aural and visual resemblances between the earlier mark, ‘METROPOL(Y)’, and the first part of the contested sign, ‘METROPOL(EE)’, will be particularly important when encountering the marks.

The figurative element of the contested sign, namely the depiction of four highly stylised skyscrapers of different heights and in different colours (red, green, yellow and blue), will not deflect consumers’ attention from the word ‘METROPOLEE’, due to its size and prominent position, although these elements are considered co-dominant. Similarly, the other word in this sign, ‘Technologies’, is not likely to be remembered, as it is purely descriptive and, therefore, non-distinctive in relation to the contested software in Class 9, software engineering/development services in Class 42 and software licensing in Class 45. Therefore, the fact that the word ‘Technologies’ is a non-distinctive and non-dominant element of the contested sign is significant, and consequently the coincidence between ‘METROPOLY’ and ‘METROPOLEE’ will be readily perceived by English-speaking consumers.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As all of the contested goods are identical to the opponent’s goods and some of the contested services are identical or similar to the opponent’s goods and services, there is a likelihood of confusion on the part of the English-speaking public within the meaning of Article 8(1)(b) EUTMR. 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 must be upheld as partly well founded on the basis of the opponent’s European Union trade mark No 10 509 032.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Karin KUHL

Andrea VALISA

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.