OPPOSITION No B 2 945 601

LCF Law Limited, One St. James Business Park, New Augustus Street, Bradford BD1 5LL, United Kingdom (opponent), represented by LCF Law, 2 The Embankment Sovereign Street, Leeds LS1 4BP, United Kingdom (professional representative)

a g a i n s t

Abakion, Lyngbyvej 2, 2100 København Ø, Denmark (applicant).

On 17/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 945 601 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 747 503 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 747 503, for the word mark ‘Legal 365’. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 566 432, for the word mark ‘LEGAL365’. 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.

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 opponent’s United Kingdom trade mark registration No 2 566 432.

1. The goods and services

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

Class 38: Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; website portal services; internet service provider; collecting transferring and disseminating information and data via internet and computer services; radio and television broadcasting; communication by electronic means; communication via internet.

The contested goods and services are the following:

Class 9: Application software for cloud computing services.

Class 42: IT consultancy, advisory and information services.

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

Contested goods in Class 9

The contested application software for cloud computing services may coincide in purpose with the opponent’s telecommunications services in Class 38. Moreover, these goods and services can be complementary to each other and coincide in distribution channels and relevant public. Therefore, they are similar to an average degree.

Contested services in Class 42

The contested IT consultancy, advisory and information services cover consultation and information related to information technology of all kinds. Bearing this in mind, the contested services have the same purpose as the opponent’s telecommunications services in Class 38, and these services normally coincide in providers and distribution channels. Furthermore, they are complementary to each other. Therefore, they are similar to an average degree.

2. The signs

LEGAL365	Legal 365
Earlier trade mark	Contested sign

The EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54). An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon examining the marks side by side.

In the present case, the signs consist of the same verbal elements (‘LEGAL’ and ‘365’), placed in the same order. The fact that they are represented in lower and/or uppercase letters is irrelevant since they are both words marks that are protected for their verbal elements per se and not the written form in which they appear. Moreover, the fact that one of the signs has a space between its elements (the contested sign) and the other sign has not (the earlier mark), is a detail that does not alter the distinctive character of the signs, let alone their overall impression. This difference is not likely to be perceived by the consumer and is considered an insignificant difference between the signs. Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

All the contested goods and services in Classes 9 and 42 were found to be similar to an average degree to the opponent’s services in Class 38. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is therefore upheld and the contested trade mark must be rejected for all the contested goods and services.

As the earlier United Kingdom trade mark No 2 566 432leads 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Sam GYLLING

Christian RUUD

Boyana NAYDENOVA

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.