OPPOSITION Nо B 2 695 792

 

COREtransform GmbH, Am Sandwerder 21, 14109 Berlin, Germany (opponent), represented by SKW Schwarz Rechtsanwälte, Kurfürstendamm 21 Neues Kranzler Eck, 10719 Berlin, Germany (professional representative) 

 

a g a i n s t

 

G-Core Innovations S.à.r.l, 2a, Rue Albert Borschette, 1246 Luxembourg, Luxembourg (applicant), represented by Potter Clarkson LLP, The Belgrave Centre Talbot Street, NG1 5GG Nottingham, United Kingdom (professional representative).

On 10/11/2020, the Opposition Division takes the following

 

 

DECISION:

1.

Opposition No B 2 695 792 is upheld for all of the contested goods and services, namely: Class 9: Computer software for use in gaming, content streaming and other content distribution; computer application software for use in gaming, content streaming and other content distribution; computer software for mobile phones, smartphones and computer tablets for use in gaming, content streaming and other content distribution; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; software for enhancing and developing video games. Class 42: Server hosting services; web hosting services; infrastructure as a service [IaaS]; platform as a service [PaaS]; software as a service [SaaS]; application service provider (ASP), namely, hosting computer software applications of others; development of computer game software; development of online software platform; consultancy and information services relating to information technology architecture and infrastructure; information technology support services; computer software technical support services; support and maintenance services for computer software; providing on-line support services for computer program users; technical support services for providing on-line gaming facilities; none of the aforesaid being for use in respect of IT management.

 

2.	European Union trade mark application No 14 955 017 is rejected for all of the contested goods and services. It may proceed for the remaining, non-contested, services.
3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 955 017  (figurative mark), namely against all of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 9 232 729 (figurative mark), and European Union trade mark registration No 9 232 406 ‘CORE’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON EXTENT OF OPPOSITION

According to the notice of opposition submitted on 02/05/2016, the opposition was directed against part of the goods and services, namely against all of the goods and services in Classes 9 and 42. In its subsequent observations of 07/12/2018, the opponent indicated that the opposition is directed against all of the goods and services, including services in Class 38.

However, these observations were not submitted within the three-month opposition period following the publication of the contested European Union trade mark application. The extent of the opposition cannot be extended once this period expires.

Therefore, the extent of opposition cannot be extended to the services in Class 38.

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

  

On 18/04/2019, the applicant requested that the opponent submit proof of use of both of the trade marks on which the opposition is based, as listed in Reasons hereinabove.

On 24/04/2019, the opponent was given two months to file the requested proof of use. However, the Office’s notification was inaccurate for the following reasons.

The relevant date that serves for calculating the starting point of the five-year period for the obligation of use, i.e. the filing date of the contested trade mark application, is 22/12/2015.

In relation to the opponent’s European Union trade mark registration No 9 232 729 (figurative mark), the request for proof of use is inadmissible. Taking into account the fact that this earlier mark was registered on 05/06/2011, it had not been registered for at least five years at the relevant date mentioned above.

However, in relation to the opponent’s European Union trade mark registration No 9 232 406 ‘CORE’ (word mark), the request for proof of use is admissible. Given that the registration date of this earlier mark is 29/11/2010, it was registered for more than five years prior to the relevant date mentioned above. This was clarified in the Office’s communications to the opponent and the applicant on 29/07/2019 and 01/08/2019, respectively. The opponent was given a two-month time limit, expiring on 06/10/2019, to submit the proof of use for this earlier mark.

 

The opponent did not submit any evidence concerning the use of earlier European Union trade mark registration No 9 232 406 ‘CORE’ (word mark). It did not argue that there were proper reasons for non-use either.

 

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR, insofar as it is based on earlier European Union trade mark registration No 9 232 406 ‘CORE’ (word mark).

After exchanging several communications in this regard between the parties and the Office, the Office notified the applicant and the opponent on 15/10/2019 and 25/10/2019, respectively, informing of the above finding and the fact that the opposition may proceed based on earlier European Union trade mark registration No 9 232 729 (figurative mark).

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.

 

 

a) The goods and services

 

In relation to earlier European Union trade mark registration No 9 232 729, the services on which the opposition is based are the following:

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

Class 42: Creation and development of computer software and hardware; Information technology consulting.

 

The opposition is directed against all of the goods and services in Classes 9 and 42 which, after limitation requested by the applicant on 10/08/2018, are the following:

 

Class 9: Computer software for use in gaming, content streaming and other content distribution; computer application software for use in gaming, content streaming and other content distribution; computer software for mobile phones, smartphones and computer tablets for use in gaming, content streaming and other content distribution; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; software for enhancing and developing video games.

Class 42: Server hosting services; web hosting services; infrastructure as a service [IaaS]; platform as a service [PaaS]; software as a service [SaaS]; application service provider (ASP), namely, hosting computer software applications of others; development of computer game software; development of online software platform; consultancy and information services relating to information technology architecture and infrastructure; information technology support services; computer software technical support services; support and maintenance services for computer software; providing on-line support services for computer program users; technical support services for providing on-line gaming facilities; none of the aforesaid being for use in respect of IT management.

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 goods in this class are computer software and computer application software for use in gaming, content streaming and other content distribution; software for playing video, computer and on-line games, or enabling video, computer and on-line games to be run on multiple platforms; software for developing, designing, modifying and customising video, computer and on-line games, as well as software for enhancing and developing video games. All of these goods are composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation, albeit for the specified purposes only.

The opponent’s creation and development of computer software in Class 42 include the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations. It should be noted that the opponent’s services are defined broadly. They include services related to software for use in gaming, content streaming and other purposes that are indicated in list of the contested goods.

Therefore, the opponent’s creation and development of computer software are closely linked to the contested software. This is because manufacturers of software will also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are similar.

Contested services in Class 42

The contested development of computer game software; development of online software platform; none of the aforesaid being for use in respect of IT management are included in the broad category of the opponent’s creation and development of computer software. Therefore, they are identical.

The contested server hosting services; web hosting services; infrastructure as a service [IaaS]; platform as a service [PaaS]; software as a service [SaaS]; application service provider (ASP), namely, hosting computer software applications of others; none of the aforesaid being for use in respect of IT management are services relating to information technology (IT) infrastructure. For example, server hosting services are an infrastructure delivery model that provides IT users with remote access to server resources in order to power applications and store data without the need to buy, configure and maintain the server hardware themselves. Software as a service [SaaS] is a way of delivering applications over the internet; instead of installing and maintaining software, the user can access it via the internet, without complex software and hardware management.

Notwithstanding the limitation of the contested services, they are dedicated to the study or use of computers, storage, networking and other physical devices, infrastructure and processes to create, process, store, secure and exchange all forms of electronic data.

The same applies to the opponent’s creation and development of computer software and hardware in Class 42. Consequently, these services target the same consumers, are provided through the same distribution channels and are generally rendered by the same kind of undertakings (employing professionals in the field of IT) which normally provide a full spectrum of IT solutions tailored to the needs of their customers. Therefore, these services are similar.

The contested consultancy and information services relating to information technology architecture and infrastructure; information technology support services; computer software technical support services; support and maintenance services for computer software; providing on-line support services for computer program users; technical support services for providing on-line gaming facilities; none of the aforesaid being for use in respect of IT management are identical or at least similar to the opponent’s information technology consulting in Class 42.

In particular, some of the contested services such as consultancy and information services relating to information technology architecture and infrastructure are included in, or overlap with, the opponent’s services.

The rest of the contested services include various support and maintenance services in the field of IT (or, where applicable, specifically in relation to on-line gaming), albeit such activities concerning IT management are excluded by the limitation. When compared to the opponent’s information technology consulting, these services are provided by the same undertakings and are offered through the same channels of distribution. These services may be directed at the same public, especially insofar as the contested information technology support services are concerned. In addition, some of the contested services, for example, maintenance of computer software and the opponent’s information technology consulting which includes computer software consultancy, share the same nature and method of use, and are complementary.

b) 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 business customers with specific professional knowledge or expertise in their respective fields of industry or commerce.

The public’s degree of attention varies from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

On the one hand, some of the goods and services at issue are for mass consumption, for example software for playing video, computer and on-line games in Class 9 and providing on-line support services for computer program users in Class 42. They are not expensive and may be purchased frequently. These considerations lead to the finding of an average degree of attention on the part of the relevant consumers which are the public at large.

On the other hand, the knowledge, experience and purchase involvement of the relevant public is high when it comes to mainly business customers that are targeted by some other of the goods and services at issue, for example server hosting services; platform as a service [PaaS]; consultancy and information services relating to information technology architecture and infrastructure in Class 42.

c) The signs

 

Earlier trade mark	Contested sign

 

It is recalled that the relevant earlier mark is European Union trade mark registration No 9 232 729.

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 applicant argues that the common element, ‘CORE’, is meaningful in relation to the relevant goods and services and has, therefore, low inherent distinctiveness.

In English, the word ‘CORE’ means, inter alia, the central, innermost, or most essential part of something. In addition, in computing, the word refers to, inter alia, one of several processing units working in parallel in a computer (information extracted on 10/11/2020 from Collins English Dictionary, www.collinsdictionary.com/dictionary/english/core).

However, the Opposition Division does not accept the argument that the entire relevant public targeted by the goods and services at issue can be reasonably expected to be familiar with the abovementioned meanings.

Admittedly, in the field of IT, specialists throughout the European Union may be familiar with technical terms that are commonly loaned from the English language. The Opposition Division accepts the applicant’s argument that the term ‘CORE’ is commonly used in the computer and technology sector as a reference to computer chips and the processing speed with which an electronic device can operate computer software.

To support this claim, the applicant adduces evidence consisting of six news articles published before the filing date of the contested trade mark. The articles were featured in specialised publications in the field of science and/or IT (Computerworld, PCWorld, MIT News, appleinsider) as well as on mass media (i.e. the ‘Science’ section of the online version of The Daily Mail).

Indeed, the press articles show that term ‘CORE’ is used to refer to objective characteristics of a processor of a computer, for example, ‘modern PCs have a processor with two, four or 16 cores to carry out tasks…but the central processing unit (CPU) developed by the researchers effectively has 1,000 cores on a single chip’ (The Daily Mail) and ‘Intel is shipping its fasted PC processor yet, the eight-core chip is aimed at gaming and high-performance systems’ (Computerworld).

However, the evidence submitted by the applicant does not prove that the average consumer throughout the relevant territory has been exposed to the English word ‘CORE’, either as part of common parlance or on the relevant market.

Firstly, the press articles submitted by the applicant are exclusively in English. The word ‘CORE’ cannot be considered to be part of English basic vocabulary that is likely to be known by anyone. Nor is it so extensively used on the relevant market, unlike other English terms such as ‘online’, ‘web’, ‘surf’ etc.

Secondly, the press articles submitted are extracted from rather specialised publications in the field of science and IT. Even in the case of the publication on The Daily Mail, it was included in the section dedicated to science.

It follows that, in the present case, it cannot be safely inferred that the meaning of the term ‘CORE’ that undeniably exists in the field of computing would be known to the public that does not have a special knowledge of English and of digital electronics.

In this regard, it must be clarified that although part of the relevant goods and services are directed at business customers, as set out in section b) of this decision, the business customers themselves do not necessarily operate in the field of IT. Moreover, it does not mean that the average consumer of this section of the public has sufficient knowledge in the field of IT, particularly when it comes to good command of technical terms in English and expertise in digital electronics.

It follows that there is a part of the relevant public, namely the non-English-speaking consumers, whether the public at large or business customers, for whom the word ‘CORE’ is an invented term without a meaning (11/12/2014, T‑618/13, AAVA CORE, EU:T:2014:1053, § 32).

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.

Consequently, the Opposition Division finds it appropriate to focus the comparison of signs, and the present assessment as a whole, on the non-English-speaking part of the relevant public for whom the common element, ‘CORE’, has an average degree of inherent distinctiveness in relation to the goods and services at issue.

The earlier mark is a figurative mark comprised of a fairly standard representation of the word ‘CORE’. In other words, the very slight stylisation of the typeface is clearly insufficient to detract the public’s attention from the word as such.

The earlier mark also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a composite mark featuring the verbal elements ‘G·CORELABS’ and a figurative element depicting the grapheme ‘G’, in grey, that is superimposed on an orange sphere.

The figurative element of the contested sign is visually more eye-catching than the verbal elements, mainly as the figurative element occupies a relatively large proportion of the sign.

The verbal elements of the contested sign comprise the letter ‘G’, the word ‘CORE’ and the word ‘LABS’, all depicted in a fairly standard font. The elements ‘G’ and ‘CORE’ are both written in black and separated by a dot between them, and the word ‘LABS’ is depicted in light grey. Due to the significantly paler colour, the visual impact that the element ‘LABS’ has on the overall impression of the contested sign is lesser than that of the elements ‘G’ and ‘CORE’.

The element ‘G’ is not likely to be associated with any clear and specific semantic content, other than the letter of the Latin alphabet that it evidently represents. The parties did not adduce any arguments concerning the meaning and distinctiveness of this element either. It must be held to have an average degree of distinctiveness in relation to the goods and services at issue.

However, the element ‘LABS’ is likely to be associated with a ‘laboratory’ since such an abbreviation is not only used in English, but also in the non-English-speaking language areas (see, to that effect, 07/07/2020, R 1536/2019-1 - ORYA LABS (fig.) / Doria, § 25). This perception is likely especially due to the existence of very similar main words in other languages of the European Union, such as ‘laboratorio’ in Spanish and Italian, ‘laboratoire’ in French, ‘Laboratorium’ in German, ‘laboratorium’ in Polish, ‘laboratórium’ in Slovak, ‘laboratoř’ in Czech etc.

However, the word ‘LABS’ may also be associated with other meanings. For example in Latvian, it means ‘good’ and for this part of the public the term is devoid of any distinctiveness, since it is laudatory and descriptive of the quality of the goods and services.

The opponent claims that the element ‘LABS’ can be disregarded as descriptive as it is short for ‘laboratories’ and the public is informed that the goods and services are the result of work performed in such a place. In reply, the applicant contends that, in the present case, no direct and specific meaning can be found between the notion of ‘laboratory’ and the relevant goods and services, since the element ‘LABS’ evokes connotations of a clinical, sterile environment in which experiments are carried out relating to the biological, physical and medical sciences.

The Opposition Division finds that, insofar as the public understands the element ‘LABS’ as referring to laboratories, it is likely to be associated with a place where experiments and research is carried out. This meaning is not limited to scientific or medical studies and may well extend to the digital world, including the IT and even gaming. Since the element ‘LABS’ alludes to the general idea that the goods and services at issue are the result of technological research and experiments, its degree of distinctiveness is reduced to below average, although it cannot be considered directly descriptive for the abovementioned part of the public.

The figurative element of the contested sign is fanciful. It is endowed with an average degree of inherent distinctiveness in relation to the goods and services.

In this regard the Opposition Division accepts the opponent’s argument which is based on settled case-law that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Here, the figurative element of the contested sign is an embellishment of the letter ‘G’ present in the sign’s verbal element. Its role in the overall impression of the contested sign is to draw the public’s attention to the verbal element ‘G’ which, nevertheless, has the same visual weight as the verbal element ‘CORE’, for the reasons given above.

 

The assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the sign are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that sign which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that sign (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 42-43).

Visually, the signs coincide in the element ‘CORE’. Although this word is depicted slightly differently in each sign, namely in bold, grey letters in the earlier mark as opposed to the fine, black letters in the contested sign, it is immediately perceptible and distinctive in both signs, for the reasons stated above.

The Opposition Division accepts the applicant’s argument, based on established case-law, that consumers tend to pay the greatest attention to the beginning of trade marks, given that consumers read from left to right.

However, although the beginning of the sign may be remembered more clearly than the rest of the mark, in the present case it cannot be lost out of sight that the common element, ‘CORE’, plays a role in the overall impression of the contested sign that is equal to the role of the verbal element ‘G’.

Moreover, the element ‘CORE’ is the only element of the earlier mark, and it is reproduced in the contested sign, notwithstanding the slight differences in the representations.

The circumstance that the element ‘CORE’ is surrounded by additional verbal elements in the contested sign is counteracted by the fact that there are graphical means that break these elements up, namely the dot between the letter ‘G’ and the word ‘CORE’, and the different colours that visually separate the word ‘CORE’ from the word ‘LABS’. As to the latter, its weight in the comparison is lower than that of the verbal elements ‘G’ and ‘CORE’, for the reasons given above.

The applicant argues that the figurative element in the contested sign is dominant and that the only coinciding element, ‘CORE’, comprises a small element of the contested sign as a whole and that, therefore, the signs are visually dissimilar.

Whilst the figurative element indeed is the most eye-catching element of the contested sign, as established above, it must be also kept in mind that the verbal element ‘CORE’ is not insignificant in the contested sign. Nor are the verbal elements completely overshadowed by the sign’s figurative element.

It remains to be noted that the applicant raises the issue of the fact that the earlier mark is a figurative mark and that it is depicted in grey, claiming protection for a specific colour code.

As shown above, the visual comparison of the signs has duly taken into account the fact that the earlier mark is not a word mark. Nevertheless, the stylisation of the earlier mark is almost imperceptible and thus the impact of that aspect has a very low weight on the comparison.

As to the colour claim of the earlier mark, the Opposition Division finds that since the contested sign, too, features elements in grey, particularly the grapheme ‘G’ in the figurative element, this circumstance rather suggests another commonality between the signs, and clearly cannot be considered as a striking difference between them.

Therefore, the signs are visually similar at least to a low degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas under analysis, the pronunciations of the signs coincide in the sound of the letters ‛CORE’. They form a word that is present identically in both signs, whether pronounced in one syllable or two.

The pronunciation of the contested differs in the sound of the letter ‘G’ and the word ‘LABS’. Although these elements have no counterparts in the earlier mark, account must be taken of the fact that the additional elements are likely to be pronounced in one syllable each (for example as /ga/, /gi/, /ge/, and /labs/, /læbs/ respectively). It is also noted that the weight of the element ‘LABS’ is lower than that of the elements ‘G’ and ‘CORE’.

As to the figurative element, it can be reasonably assumed that the average consumer will omit it from the pronunciation when referring to the contested sign. This is because it is a graphical embellishment of the letter ‘G’ which is already included in the sign’s verbal elements.

Therefore, and for similar reasons as outlined in the visual comparison above, the signs are similar to an average degree.

  

Conceptually, although the public under analysis will perceive the meaning(s) of the elements ‘G’ and ‘LABS’ of the contested sign as explained above, the earlier mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Nevertheless, the above finding should not be overrated. The common element, ‘CORE’, is conceptually neutral and is not affected by the presence of the additional elements in the contested sign. That is to say, the elements ‘G’ and ‘LABS’, when juxtaposed to the element ‘CORE’, do not result in a conceptual unit.

Furthermore, it has to be kept in mind that the concept of the element ‘G’ in the contested sign is confined to a mere letter of the Latin alphabet without further semantic connotations attached thereto. The same concept is merely repeated by the sign’s figurative element.

And lastly, it is noted that the conceptual difference resulting from the element ‘LABS’ has a limited weight in the comparison due to its reduced distinctiveness for a part of the public, or lack of distinctiveness for the remaining part of the public.

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

 

d)  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 has no meaning for any of the services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘CORE’. In support of its argument the applicant refers to a number of European Union trade mark registrations for goods in Class 9 and/or services in Class 42.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used.

Bearing in mind that the present assessment is focused on the non-English-speaking part of the relevant public in the European Union, and for similar reasons as given in section c) of this decision regarding the use of the term ‘CORE’ in press articles, the evidence filed does not demonstrate that the relevant public under analysis has been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CORE’.

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

e) Global assessment, other arguments and conclusion

The contested goods and services are identical or similar to some of the services on which the opposition is based. They are directed at both the public at large and at business customers whose degree of attention in relation to the purchases in question varies from average to high.

From the perspective of the non-English-speaking part of the relevant public in the European Union, which is the public under analysis here, the earlier mark enjoys an average degree of inherent distinctiveness which affords it a normal scope of protection in the assessment.

The signs are considered similar at least to a low degree on the visual level, and aurally, the degree of similarity between the signs is average. Conceptually, the signs are not similar. However, for the reasons given in detail in section c) of this decision, the lack of conceptual similarity is not of such an impact as to counteract the (at least low) degree of similarity between the signs found from the visual and aural perspectives.

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

In this regard, it has to be pointed out that it is common practice, on the relevant market, for undertakings to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public under analysis is likely to mentally register the fact that the contested sign reproduces the earlier mark, albeit in a slightly different representation, and perceive the contested sign as a variation of the earlier mark, for example as a sub-brand configured in a different way according to the type of goods and services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the average consumer may attribute the same (or economically linked) commercial origin to the goods and services at issue, even where the public’s degree of attention is high.

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).

Here, the remote similarity between the signs on the visual level is safely counteracted by the fact that the goods and services are identical or similar. Furthermore, the earlier mark, ‘CORE’, plays a distinctive and immediately perceptible role in the overall perception of the contested sign, even from the perspective of the business customers targeted by some of the goods and services at issue and in relation to which the public’s attentiveness is considered high.

Considering all the above, the differences identified between the overall impressions produced by the signs are incapable of putting sufficient distance between them in order to enable the average consumer of the non-English-speaking part of the relevant public to safely distinguish between the trade marks in the context of identical or similar goods and services.

Therefore, there is a likelihood of confusion on the part of the non-English-speaking part of the relevant public in the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 232 729. It follows that the contested trade mark must be rejected for all of the contested goods and services.

 

COSTS

 

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

 

 

Cristina CRESPO MOLTO

Solveiga BIEZA

Erkki MÜNTER

 

 

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.