OPPOSITION No B 2 935 701

Media Data Services, Avenue des Censives, 60000 Tillé, France and NGPA, SAS, Avenue des Censives, BP 50333, 60026 BEAUVAIS Cedex, France (opponents), represented by Naomi Aaronson, 41 avenue Bosquet, 75007 Paris, France (professional representative)

a g a i n s t

Terranet AB, Ideon Science Park, 22370 Lund, Sweden (applicant), represented by Baker & Mckenzie Advokatbyrå KB, Vasagatan 7, 101 23 Stockholm, Sweden (professional representative).

On 05/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 935 701 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 636 301 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponents filed an opposition against all the goods and services of European Union trade mark application No 16 636 301 for the word mark ‘TERRANET’. The opposition is based on European Union trade mark registration No 7 059 587 for the word mark ‘TERRE-NET OCCASIONS’, in relation to which the opponents invoked Article 8(1)(a) and (b) EUTMR, and French trade mark registrations No 4 300 357 and No 97 662 914, both for the word mark ‘TERRE-NET’, in relation to which the opponents invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

Ownership of the earlier marks

The Opposition Division takes note of the fact that ownership of the earlier mark EUTM No 7 059 587 has been transferred during the opposition proceedings and that the transfer has been recorded in the register of the Office. Consequently, the new owner of this opposing mark, Media Data Services, becomes an opponent together with the previous owner of this mark who still remains the registered owner of the two remaining earlier marks.

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.

According to Article 10(1) EUTMDR a request for proof of use of an earlier mark pursuant to Article 47(2) or (3) of Regulation (EU) 2017/1001 shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) of this Regulation. According to Article 82(2)(b) EUTMDR the supplementing regulation is applicable from the date of entry into force referred to in its Article 82(1) with the exception that Article 10 shall not apply to requests for proof of use made before 1 October 2017.

In the present case the request for proof of use, filed by the applicant on 20/11/2018 has not been submitted by way of a separate document. Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponents’ European Union trade mark registration No 7 059 587.

a) The goods and services

The services on which the opposition is based are, inter alia, the following:

Class 38: Telecommunications services.

Class 42: Design, writing, creation and development of computer programs, software packages and computer software, particularly in the field of agriculture.

The contested goods and services are the following:

Class 9: Telecommunications instruments and apparatus; software for computers and mobile communication units; communications software for connecting mobile phone devices; application software for mobile phones, namely, software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data, data traffic, information, and audio and video content; application software for mobile phones, namely, software for wireless mobile data trading and sharing.

Class 38: Telecommunications and data communications services; providing access to computer networks; provision of access to an electronic on-line network for information retrieval; data transmission; data communication by electronic means; digital communications services; communication services for the electronic transmission of data; wireless communications services, namely providing wireless communications; wireless data transmission services; consulting in the field of data communication and telecommunication services, namely communication between mobile communications devices.

Class 42: Programming of data processing equipment; computer programming for telecommunications.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘particularly’, used in the opponents’ list of services in Class 42, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

It is also 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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 9

The contested goods in this class consist of telecommunications instruments and apparatus and software specifically designed for computers and various mobile communication units, such as mobile phones. All these goods are similar to the opponents’ telecommunications services in Class 38, that is services that allow people to communicate with one another by remote means. Although they differ in nature (goods are tangible, while services are intangible), they have the same purpose (i.e. allowing communication between people), target the same end users and are complementary. Furthermore, they are distributed through the same channels.

Contested services in Class 38

All of the contested services in this class are various telecommunications services and are, therefore, identical to the opponents’ telecommunications services, either because they are identically contained in both lists or because the applicant’s services are included in, or at least overlap with, the opponents’ services.

Contested services in Class 42

The contested computer programming for telecommunications is included in the broad categories of the opponents’ design, writing, creation and development of computer programs, software packages and computer software, particularly in the field of agriculture. Therefore, they are identical.

The contested programming of data processing equipment is at least similar to the opponents’ design, writing, creation and development of computer programs, software packages and computer software, particularly in the field of agriculture. These services, at the very least, usually originate from the same providers and are distributed through the same channels. Also the relevant public largely overlaps.

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 (at least) similar are directed at the public at large and business customers with specific professional knowledge or expertise.

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

c) The signs

TERRE-NET OCCASIONS	TERRANET
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The 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.

Some elements of the signs are meaningful in those countries where English is understood. This affects the perception of the signs by that public, in particular their conceptual understanding and the assessment of likelihood of confusion in these countries, as explained below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, namely the public in Ireland, Malta and the United Kingdom.

The signs are word marks, the earlier one is composed of the verbal elements ‘TERRE-NET OCCASIONS’ and the contested one of the single verbal element, ‘TERRANET’. In the case of word marks, it is the word as such that is protected and not its written form. For the same reasons, word marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The first element of the earlier mark ‘TERRE-NET’ and the contested sign ‘TERRANET’ are meaningless, as such. However, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This is justified by the fact that consumers naturally look for a meaning when reading a word. Therefore, in the present case, the public is likely to break these words down into the elements ‘TERRE / TERRA’ and ‘NET’, both of which may be associated with certain meanings by this public.

The component ‘TERRA’ of the contested sign will be understood, by at least an important part of the relevant public, as a noun, indicating ‘any of the relatively light-colored highland areas on the surface of the moon or a planet’ or ‘land or territory’ (information extracted from Merriam-Webster and Lexico on 27/06/2019 at www.merriam-webster.com/dictionary/terra and www.lexico.com/en/definition/terra#
terra). Given that a plural form of this noun is ‘terrae’, pronounced \ter-​(ˌ)ē\, the same meaning is likely to be attributed also to the word ‘TERRE’ of the earlier mark’s first element. As these elements are not descriptive, allusive or otherwise weak in relation to the relevant goods and services, their inherent distinctive character is average.

Bearing in mind that all the relevant goods and services are IT-related, the coinciding ending ‘NET’ will most likely be understood as a reference to ‘a group of communications stations operating under unified control’ or, less commonly, to the ‘internet’ (information extracted from Merriam-Webster on 27/06/2019 at www.merriam-webster.com/dictionary/net). Consequently, the inherent distinctiveness of this element of the signs is at most weak.

The hyphen (‘-‘) of the earlier mark is a punctuation mark used to join words and to separate syllables in a single word. It does not play an independent distinctive role within the earlier mark and it will merely help the public to separate the elements ‘TERRE’ and ‘NET’ visually. Since the public does not normally perceive punctuation marks as an indication of origin, this element will not be afforded much trade mark significance, if any, by the relevant public.

The word ‘OCCASIONS’ of the earlier mark is a plural form of a noun ‘occasion’, referring to ‘a favorable opportunity or circumstance’ (information extracted from Merriam-Webster on 27/06/2019 at www.merriam-webster.com/dictionary/occasions) and, as such, it may be considered laudatory for the opponents’ goods and services and is at most weakly distinctive.

Visually and aurally, the earlier mark’s first element, ‘TERRE-NET’ is almost entirely incorporated in the contested sign, ‘TERRANET’.

These elements differ only in their fifth letters, namely ‘E’ and ‘A’, respectively, and (visually) in the presence of the hyphen in the earlier mark. However, the resulting difference will be barely audible given that it is located in the middle of the word which is composed of otherwise identical letters, has an identical aural length, rhythm and the same vowel sequence ‘* E * * E/A * E *’. The presence of the hyphen in the earlier mark will not be perceived aurally. Therefore, ‘TERRE-NET’ and ‘TERRANET’ will produce a highly similar sound.

The contested sign differs in its second word, ‘OCCASIONS’, which has no counterpart in the earlier sign. Since, however, it is at most weakly distinctive and located in a secondary position, its impact on the consumers’ perception of the signs should not be overestimated.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with identical concepts evoked by the elements ‘TERRE’ / ‘TERRA’ and the ending ‘NET’, while the earlier mark differs in the laudatory concept evoked by the word ‘OCCASIONS’. Therefore, the signs are conceptually similar to at least an average degree.

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.

In this regard it is noted that, even though the opponents did not specifically invoke Article 8(5) EUTMR in relation to EUTM No 7 059 587, taken for comparison purposes in the present case, they did claim generally that the earlier mark ‘TERRE-NET’ has been extensively used in France and, thus, enjoys a certain reputation in this territory. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

However, evidence submitted by the opponents to prove this claim, namely a single printout from the opponents’ own website www.terre-net.fr with the list of 10 most popular articles published on the opponents’ website, is not sufficient to demonstrate that the earlier trade mark acquired a reputation or a high degree of distinctiveness through its use. 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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually, aurally and conceptually similar to at least an average degree. The earlier mark as a whole has a normal degree of distinctiveness for the relevant public, namely the public at large and business customers displaying an average to high degree of attention.

The contested sign, ‘TERRANET’, is nearly entirely incorporated in the earlier sign’s first and most distinctive element, ‘TERRE-NET’, which is of the same length and will be pronounced almost identically. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that these elements coincide are of particular importance.

At the same time, the differences of this coinciding element are located in its middle section (i.e. the sign’s fifth letters, ‘E’ and ‘A’, and the hyphen of the earlier mark), where they are more likely to be overlooked by the relevant public. The fact that the public will be more attentive does not mean that they will examine the mark before them in the slightest detail. Even for a public with a high level of attentiveness, the fact remains that average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48). In any event, the impact of the hyphen in the earlier marks on the relevant public, if any, is very limited, and it will not be perceived aurally.

The earlier mark additionally differs from the contested sign in its second word, ‘OCCASIONS’, which, however, is at most weakly distinctive and is placed in a secondary position in the sign, as its final element; therefore, its impact on the consumers’ perception will be limited.

Bearing in mind the above, the Opposition Division is of the opinion that the differences between the signs are not sufficient to outweigh their similarities, in particular given that the relevant goods and services are (at least) similar or identical. The overall impression created by the signs is that they are similar to each other.

Moreover, as correctly noted by the opponents, even if consumers would perceive certain differences between the marks, 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. Therefore, even if the marks were not directly confused with one another, there is still a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the highly similar word ‘TERRANET’, that the contested goods and services are derived from the same undertaking or economically linked undertakings.

In the present case, it is highly conceivable that relevant consumers will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The public may be led to believe that the contested sign is a new, shortened version of the earlier mark for identical or similar goods and services.

Consequently, taking into account the above factors, the Opposition Division concludes that there is a likelihood of confusion for the English-speaking part of the public, namely the public in Ireland, Malta and the United Kingdom. Therefore, the opposition is well founded on the basis of the opponents’ European Union trade mark registration No 7 059 587. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right European Union trade mark registration No 7 059 587 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponents (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(1)(a) and 8(5) EUTMR.

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 opponents 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 opponents 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

Gueorgui IVANOV

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.