OPPOSITION No B 2 875 956

WD Plus GmbH, Wohlenbergstr. 16, 30179, Hannover, Germany (opponent), represented by KPMG Law Rechtsanwaltsgesellschaft mbH, Ludwig-Erhard-Straße 11-17, 20459, Hamburg, Germany (professional representative)

a g a i n s t

Global Sport (SAS), Zone Industrielle de Tragone - Lotissement Ascosa, 20620, Biguglia, France (applicant), represented by Office Méditérranéen de Brevets d’Invention et de Marques Cabinet Hautier, 20, rue de la Liberté, 06000, Nice, France (professional representative).

On 03/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 875 956 is partially upheld, namely for the following contested goods and services:

Class 9: all goods except for electronic publications, downloadable.

Class 38: all services.

Class 42: all services except for engineering evaluations and appraisals in the fields of science and technology; scientific and technical research; research and development for others; technical project studies; digitization of documents.

2. European Union trade mark application No 16 121 022 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 121 022 for the figurative mark . The opposition is based on German trade mark registration No 302 016 017 660 for the figurative mark . 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 on which the opposition is based are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data media; data processing equipment; computers; information technology and audiovisual equipment particularly data processing equipment and accessories (electrical and mechanical) as far as included in this class; computer mouses; keyboards; sound cards; computer housings; computer components particularly hard discs, installation frames for hard discs and/or dual-interchangeable frames; housings for electrical apparatus; data storage devices; electrical adapters; video grabbers; digital cameras particularly IP cameras, helmet cameras and/or dashboard cameras; camera mounts; electrical parking control; selfie sticks [hand-held monopods]; apparatus, instruments and cables for electricity particularly electrical plugs particularly plugs with USB port, USB cables, chargers, 12 volt adapters for motor vehicles, antennas, aerial cables, antenna transmission wire; electric and electronic components particularly sockets; connected bracelets [measuring instruments]; smartphones; covers and display screen protectors for smartphones and/or cell phones; protective films adapted for computer screens; light-emitting diodes (LED); cases adapted for computers.

Class 11: Apparatus for lightning, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; electrical lighting fixtures; ventilating fans particularly desktop ventilating fans; USB powered ventilation fans

The contested goods and services are the following:

Class 9: Computer software for mobile telephones, electronic tablets, computers and other mobile electronic devices; Software downloadable to mobile phones, tablets, computers and other electronic mobile devices; Computer application software for mobile telephones, electronic tablets, computers and other mobile electronic devices; Application software in the field of sport for mobile telephones, electronic tablets, computers and other mobile electronic devices; Application software in connection with the management of sporting events and the management of sporting exercise for mobile telephones, electronic tablets, computers and other mobile electronic devices; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Data processing equipment and computers; Computers; Computer software; Recorded computer software; Downloadable computer software; Software applications; Website applications; Data recorded electronically from the Internet; Software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organising audiovisual, videographic and written data; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information; Electronic publications, downloadable; Computer programs for data processing; Electric sensors, Electronic sensors, Electronic sensors for detecting, displaying, transmitting and analysing data during physical exercise; Ultrasonic sensors, Thermo-sensors, Measuring sensors, MP3 fibre sensors; Apparatus for the transmission of data; wireless transceivers; Electronic global positioning systems; Multifunctional electronic devices for displaying, measuring and uploading information on the internet.

Class 35: Advertising; Business management; Business administration; Business administration of licences for using goods and services; Subscriptions to telecommunications database services; Office functions; Direct mail advertising; Arranging newspaper subscriptions (for others); Arranging subscriptions to telecommunication services for others; Presentation of goods on communication media, for retail purposes; Business management and organization consultancy; Accounting; Document reproduction; Employment agencies; Computerised file management; Web site traffic optimisation; Exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations services; Systemization of information into computer databases; Compilation of information onto computer databases; Demonstration of goods; Data compilation for others; Compilation of computer databases; Compilation of direct mailing lists; Compilation of advertisements; Compilation and systemisation of written data and communications; Statistical analysis and reporting; compilation and systemization of information used in electronic transmissions.

Class 38: Telecommunications; Information about telecommunication; Transmission of electronic files, messages or images; Communications by computer terminals or by fibre optic networks; Radio or telephone communications; Providing user access to global computer networks; Provision of on-line forums; Providing access to databases; Provision of access to on-line services; Electronic advertising services (telecommunications); Providing telecommunications connections to a global computer network; News agencies; Rental of telecommunication equipment; Teleconferencing or videoconferencing; Electronic messaging; Electronic mail; Telecommunications networks in the sporting sector; Providing of access to computer and/or telecommunications portals and sites relating to sport.

Class 41: Education; Providing of training; Entertainment; Sporting activities; Cultural activities; Entertainment information; Education information; Recreation facilities (Providing -); Publication of books; Library services; Production of cinematographic films; Rental of sound recordings; Videotape editing; Photography; Organization of competitions education or entertainment; Arranging and conducting of colloquiums; Arranging and conducting of conferences; Arranging and conducting of congresses; Organization of exhibitions for cultural or educational purposes; Booking of seats for shows; Game services provided on-line from a computer network; Publication of electronic books and journals on-line; Desk-top publishing; Consultancy services relating to training; Arranging and conducting of entertainment events; Professional consultancy relating to training; Physical fitness training consultancy; Soccer instruction; Instruction in sporting activities; Education services relating to health; Tuition; Tuition in sports; Sports and fitness; Online publishing, electronic publication of texts; Online and electronic publication of periodicals and books, computerised publishing; Physical-education services; Instruction in nutrition [not medical]; Sports club services; Physical training services; Sports coaching; Physical training services; Coaching services for sporting activities; Personal trainer services; Sports coaching; Sports camp services.

Class 42: Engineering evaluations and appraisals in the fields of science and technology; Scientific and technical research; Consultancy, design and development of computer software and applications; Research and development for others; Technical project studies; Development (design), installation, maintenance, updating or rental of software or applications; Computer programming; Computer system analysis; Computer system design; Consultancy in the design and development of computer hardware; Digitization of documents; Software as a service (SaaS); Cloud computing; Information technology [IT] consultancy; Server hosting; Electronic data storage; Providing temporary use of non-downloadable software applications accessible via a web site; Electronic data storage and Creation of electronic backup copies.

Preliminary remarks

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘particularly’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Both parties submitted a number of arguments in relation to the interpretation and comparison of the goods and services at issue. The opponent argues that all the goods and services are identical or similar, in particular because of the similarity of the goods and services to computers, relying on the Offices’ previous decisions or on commonalities in some of the relevant factors indicated above. The applicant argues that in inter partes proceedings the opponent must prove/argue the similarity of the goods and services and it failed to do so. Furthermore, the applicant argues that the goods and services are dissimilar based on the relevant criteria for establishing similarity and the possible use of the goods and services.

In this regard it is noted that the degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it (16/01/2007, T‑53/05, Calvo, EU:T:2007:7, § 59). Therefore, the Opposition Division will proceed with the analysis of the similarity of the goods and services taking into account the well-known facts, the parties’ arguments and the Office’s practice as reflected in the Guidelines for Examination in the Office¹.

Furthermore, comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant to this comparison, since the comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9

Apparatus for recording, transmission or reproduction of sound or images; computers; data processing equipment and computers are identically contained in both lists of goods.

The contested electric sensors, electronic sensors, electronic sensors for detecting, displaying, transmitting and analysing data during physical exercise; ultrasonic sensors, thermo-sensors, measuring sensors, MP3 fibre sensors overlap with the opponent’s connected bracelets [measuring instruments]. Therefore, they are identical.

The contested magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media are included in the broad category of the opponent’s data storage devices. Therefore, they are identical.

The contested apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organising audiovisual, videographic and written data; multifunctional electronic devices for displaying, measuring and uploading information on the internet; apparatus for the transmission of data; electronic global positioning systems are included in or overlap with the opponent’s data processing equipment. Therefore, they are identical.

The contested software (i.e. computer software for mobile telephones, electronic tablets, computers and other mobile electronic devices; software downloadable to mobile phones, tablets, computers and other electronic mobile devices; computer application software for mobile telephones, electronic tablets, computers and other mobile electronic devices; application software in the field of sport for mobile telephones, electronic tablets, computers and other mobile electronic devices; application software in connection with the management of sporting events and the management of sporting exercise for mobile telephones, electronic tablets, computers and other mobile electronic devices; computer software; recorded computer software; downloadable computer software; software applications; website applications; software for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organising audiovisual, videographic and written data; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information; computer programs for data processing; data recorded electronically from the internet (the latter covers recorded software)) is similar to the opponent’s data processing equipment. The opponent’s goods include various devices (e.g. computers, smartphones) and manufacturers of these goods also make software. These goods have the same distribution channels and target the same professional public (e.g. for use in banking and finance, education, medicine, business and entertainment/recreation) and/or the general public. Moreover, they are complementary. Therefore, these goods are considered to be similar.

The contested wireless transceivers are similar to the opponent’s electric and electronic components particularly sockets (where ‘sockets’ is only an example of the goods covered by the opponent’s electric and electronic components) because they have the same purpose, end user and producer. Furthermore, they have the same distribution channels.

The contested electronic publications, downloadable are dissimilar to the opponent’s goods in Classes 9 and 11. The opponent’s goods are various technical goods in both classes (e.g. apparatus, instruments and equipment for data processing, electricity, lighting and cooking) and their peripherals, accessories and components (e.g. computers components, keyboards) as well as various blank data carriers (e.g. magnetic data media in Class 9). The opponent’s goods have nothing relevant in common with the contested electronic publications, downloadable, as they have obviously different natures, purposes and methods of use. They are not complementary or in competition, are not produced by the same companies, do not have the same distribution channels and do not target the same end user.

Contested services in Class 35

The contested services in this class are services rendered by persons or organisations to help in the operation or management of a commercial undertaking, and in the management of business affairs or commercial functions, as well as services rendered by advertising establishments in the field of communications, publicity and statements to the public through a variety of dissemination channels and regarding all kinds of goods or services.

Some of the opponent’s goods defined above are indeed used in the provision of those services (e.g. computers are used to work on documents). This does not, however, render them similar in any relevant way, as computers are nowadays used for almost any kind of commercial activity and similarity of computers to any services in which computers are used would lead to a far-fetched finding of similarity between computers and almost any other goods and services.

Therefore, the analysis of similarity must rely on the factors of similarity explained previously. In this case, the opponent’s goods listed and described above and contested services have different natures, purposes and methods of use. They are not produced/provided by the same companies, do not have the same distribution channels and do not target the same end user. They are not complementary (in the sense that one is essential for the use of the other) or in competition.

Even the contested services such as web site traffic optimisation; systemization of information into computer databases where ‘computers’ are explicitly mentioned are not sufficiently closely related to the opponent’s computers (and even less so to other goods). The companies that provide marketing support in the form of web site traffic optimisation or data systemisation into computer databases do not manufacture the working tools such as computers, and, vice versa, computer manufacturers do not usually provide secretarial or marketing advice/support. Despite claiming the opposite to this, the opponent did not submit any sound arguments or evidence which may have enabled the Opposition Division to draw the contrary conclusion.

Therefore, the Opposition Division considers that all contested services in this class are dissimilar to all the opponent’s goods.

Contested services in Class 38

The contested services in this class are all various telecommunication services and are considered to be similar to the opponent’s data processing equipment and information technology and audiovisual equipment particularly data processing equipment and accessories (electrical and mechanical) as far as included in this class (Class 9). Since the 1990s, the boundary between telecommunications equipment and IT hardware/software (in this case, the opponent’s goods include IT hardware) has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecommunications data. Clearly, there is a link between the above goods in Class 9 and telecommunication services in Class 38. These goods and services are similar, given their complementary character; although their natures are different, their purpose and distribution channels are the same (12/11/2008, T‑242/07, Q2web, EU:T:2008:488, § 24-26).

Contested services in Class 41

The contested services in this class cover mainly services rendered by persons or institutions in the development of the mental faculties of persons (or animals), as well as services intended to entertain or to engage the attention.

The same arguments and conclusions as in the case of the contested goods in Class 35 are applicable to the contested services in Class 41. In particular, the fact that computers and other data-processing equipment or blank media are commonly used in the preparation and provision of the contested services cannot be deemed sufficient to render them similar.

Therefore, the Opposition Division considers that these contested services are dissimilar to all the opponent’s goods.

Contested services in Class 42

The contested computer programming is closely linked to the opponent’s computers in Class 9. This is because, in the field of computer science, producers of computers will also commonly provide computer-related services (as a means of keeping the system updated, for example). Consequently, although the nature of the goods and services is not the same, the end users and the producers/providers of the goods and services are both the same. Furthermore, the goods and services are complementary. For these reasons, these goods and services are considered similar.

In the same vein, the contested consultancy, design and development of computer software and applications; development (design), installation, maintenance, updating or rental of software or applications; computer system analysis; computer system design; consultancy in the design and development of computer hardware; software as a service (SaaS); cloud computing; information technology [IT] consultancy; server hosting; electronic data storage; providing temporary use of non-downloadable software applications accessible via a web site; electronic data storage and creation of electronic backup copies are similar to the opponent’s computers in Class 9. Unlike the comparisons of the contested goods in Classes 35 and 41, the link between the opponent’s computers and other data-processing equipment and the contested IT services in Class 42 is much closer.

However, the engineering evaluations and appraisals in the fields of science and technology; scientific and technical research; research and development for others; technical project studies; digitization of documents do not belong to the IT field and therefore the same reasoning as explained in the sections regarding the services in Classes 35 and 41, is applicable. Due to the lack of coincidence in any of the relevant factors, these contested goods are considered dissimilar to all the opponent’s goods.

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 are directed at the public at large and/or specialised/business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are shapes that with some imagination or context (e.g. appearing among letters) could be perceived, by a part of the public, as having a certain concept, such as the letter ‘a’ (more likely in the case of the contested mark) or a tilted symbol signifying a position on a map or a drop of water (more likely in the case of the earlier mark). However, the Opposition Division considers that this would not be the case for all the relevant public, especially considering the lack of context for the device elements. When considering the signs as registered/applied for, a significant part of the public will perceive them as abstract device elements.

In this context the Opposition Division notes that if a significant part of the relevant public for the goods and services at issue may be confused about the origin of the goods and services, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods and services are likely to be confused. Consequently, for reasons of procedural economy, the comparison of the marks will focus on the significant part of the public that will not associate the marks at issue with any concept.

Although both signs are composed of rather simplistic devices, they are distinctive to an average degree, as they neither are basic geometrical shapes nor have any other clear meaning/relationship to the goods and services that could possibly impair their distinctiveness.

Visually, the shapes of the signs coincide in their main features, that is, similar shapes created by a thick monochromatic line/border, both round at the top left and pointed at the bottom right corner, both on a white background. The proportion between the colour and white parts of the signs is similar as well. The signs differ in the colour of the thick line/border, that is, black versus orange. Another difference, although not very striking, between the marks is the gap in the bottom right corner of the contested sign and the greater curvature of the line/border near the gap.

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

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

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

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 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

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.

The goods and services are partly identical, partly similar and partly dissimilar. The degree of attention in relation to the identical and similar goods and services varies from average to high.

The distinctiveness of the earlier mark is average. The signs are visually similar to at least an average degree. As mentioned in section c) above, a significant part of the public will not associate the marks at issue with any concept and consequently neither the aural aspect (as they will not be pronounced) nor the conceptual aspect plays a role in the perception and comparison of the signs for the significant part of the public.

The Opposition Division considers that, in the absence of any aural or conceptual differences, the consumers, who have to rely on the visual impressions created by the signs, which are similar to at least an average degree, would not be able to safely distinguish them. Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Therefore, the likelihood of confusion cannot be safely ruled out even for the professional public or the public displaying a high degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the significant part of the public that would not associate the signs with any concept. The Opposition Division reiterates that it is sufficient for establishing likelihood of confusion if only a significant part of the relevant public may be confused about the origin of the goods and services. It is not necessary to establish that all consumers of the relevant goods are likely to be confused.

Therefore, in relation to the identical and similar goods and services, the opposition is well founded on the basis of the opponent’s German trade mark registration, and the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

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.

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

Vít MAHELKA

Vita VORONECKAITE

Cindy BAREL

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.