OPPOSITION No B 2 988 544

Elisa Oyj, Ratavartijankatu 5, 00520 Helsinki, Finland (opponent), represented by Roschier Brands, Attorneys Ltd., Kasarmikatu 21 A, 00130 Helsinki, Finland (professional representative)

a g a i n s t

Herwig Amlacher, August v. Jaksch Straße 28, 9500 Villach, Austria (applicant).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 988 544 is partially upheld, namely for the following contested goods and services:

Class 9: Software; Mobile software; Assistive software; Interface software; Application software.

Class 38: Telematic communication services.

Class 42: Software creation; Software development; Computer specification design; Database design and development; Design and development of telecommunications networks.

2. European Union trade mark application No 17 156 415 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 156 415 ‘Lisa’. The opposition is based on, inter alia, European Union trade mark registration No 16 337 602 ‘ELISA’. 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 European Union trade mark registration No 16 337 602 ‘Lisa’.

1. The goods and services

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

Class 9: Software for environmental solutions; Software (computer -) [recorded]; Computer programs, recorded; Computer programs (downloadable software); Game software for computers and mobile phones; Object programs for computers and mobile phones; Interface software for computers and mobile phones; Portable media players; Computer software; Downloadable software for publishing and sharing digital media and information via global computer and communication networks; Instant messaging software; Electronic mail software; Communication software for the electronic exchange of sound, data, video and graphics accessible via computer, mobile, wireless and telecommunication networks; Communication and computer software for electronic calendar and electronic address list; Computer software for processing images, graphics, audio, video and text; Computer software development tools; Computer software for use in developing computer programs; Video and audio negotiation software; Displays and apparatus for video and audio-conferencing; Apparatus for the transmission of data, sound and images; Computers, tablet computers, telephones and touch screen telephones.

Class 28: Games and playthings; Game consoles; Electronic games; Mechanical games.

Class 35: Advertising; Business management; Business administration; Office functions; Management consultancy relating to IT services; Retailing in telecommunication goods.

Class 38: Telecommunications and mobile telecommunications; Transmission of electronic mail; Email for data and voice; instantaneous messages services; Providing video conferencing services; Text messaging services; Data transmission and reception services via telecommunications means; Electronic exchange of audio, data, and graphics accessible via computer and telecommunication networks; Local and long distance transmission of voice, data, graphics via computer and telecommunications networks; Video and voice conferencing services; Computer communication services; Wireless communications services; Telephone messaging services; Mobile telephone communications services; Telecommunications services, namely electronic transmission of data and digital messaging via global computer and communication networks; Providing online forums, chat rooms and electronic bulletin boards for transmission of messages amongst users; Digital multimedia broadcasting over the internet, namely posting, displaying, and electronically transmitting data, audio and video; Communication by computer terminals; Local and long distance telephone services; Providing access to the Internet; E-mail hosting services; Providing on-line forums for transmission of messages among users in the field of video sharing; Transmission of multimedia content among users; Electronic transmission of data; Providing an idea sharing portal; Providing online community forums for users to post, search, watch, share, critique, rate, and comment on, videos, and other multimedia content; Digital transmission of audio and video broadcasts via a global computer network; Providing a video delivery (data transfer) portal for entertainment and education purposes; Providing a video delivery (data transfer) portal; Webcasting services; information, advisory and consultancy services relating to all the aforesaid services.

Class 41: Training in electronic data media and providing information relating thereto over the internet or other communication networks; Entertainment, namely providing entertainment multimedia content and entertainment information over the internet and (or) other communication networks; Entertainment; Educational services; Entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and related information via computer and communications networks; Education and entertainment; Digital video, audio and multimedia entertainment publishing services; Online digital publishing services; Staging of all kinds of theatre productions; Organising theatre workshops and theatre seminars; Performance of dance, music and drama; Orchestra services; Tuition; Organising of entertainment; dancing displays; dance competitions; Theater productions; Theater production; Booking agency services for theatre tickets; Theatrical booking agency services; Agency services for the promotion of performing arts; Show production services; Arranging and conducting of concerts; Production of cinematographic films; Production of television and radio programs; Videotape production; Production of shows; Rental of theatre scenery; Performances (Presentation of live -); Publication of magazines; Organising events for entertainment purposes; Singing instruction and acting courses; Stage management.

Class 42: Computer services, namely providing temporary use of a non downloadable computer interface in order to create personalised online information services; Providing temporary use of a non-downloadable computer interface containing private collections of information; Providing use of a non-downloadable computer interface in order to provide information concerning a wide range of text, electronic documents, databases, graphics and audio-visual information; Search engines; Cloud services; Providing a website containing technology enabling the searching of directories, databases, text, electronic documents, graphic images and audio-visual data via a global computer data network; Providing a non-downloadable platform which updates and maintains digital information, such as electronic calendars; Application provider services; Providing use of non-downloadable software; Providing access to non-downloadable software to enable uploading and downloading or otherwise providing electronic media, multimedia content, videos, films, images, text, photos, games, user-generated content, audio content, and information via the internet or other computer and communication networks; Providing access to non-downloadable software to enable capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, or otherwise providing via the internet or other computer and communication networks; Providing access to nondownloadable software to enable sharing of multimedia content and comments among users; Providing access to non-downloadable software to enable content providers to track multimedia content; Hosting web sites containing multimedia content for others; Hosting web sites containing multimedia entertainment and educational content for others.

The contested goods and services are the following:

Class 9: Software; Mobile software; Assistive software; Interface software; Application software.

Class 36: Insurance services; Financial services; Insurance advice; Insurance information; Insurance risk management; Risk management [financial].

Class 38: Telematic communication services.

Class 42: Software creation; Software development; Computer specification design; Database design and development; Design and development of telecommunications networks.

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

The term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 software; mobile software; assistive software; interface software; application software are included in the broad category of the opponent’s software (computer -) [recorded]. Therefore, they are identical.

Contested services in Class 36

Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. Furthermore, financial services are the economic services provided by the finance industry, which encompasses a broad range of businesses that manage money, including credit unions, banks, credit card companies, insurance companies, accountancy companies, consumer finance companies, stock brokerages and investment funds.

The contested insurance services; financial services; insurance advice; insurance information; insurance risk management; risk management [financial] are dissimilar to the opponent’s goods in Classes 9 and 28 and services in Classes 35, 38, 41 and 42. They have nothing in common. They differ in their natures and purposes, distribution channels, sales outlets, producers/providers and methods of use. Furthermore, they are neither complementary nor in competition.

Contested services in Class 38

Telematics is a term that combines the words telecommunications and informatics to broadly describe the integrated use of information and communications technology to transmit, store and receive information from telecommunications devices to remote objects over a network.

The contested telematic communication services overlap with the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested software creation; software development; computer specification design; database design and development are similar to the opponent’s providing use of non-downloadable software. They usually have the same providers, relevant public and distribution channels.

The contested design and development of telecommunications networks is similar to a low degree to the opponent’s providing access to non-downloadable software to enable sharing of multimedia content and comments among users. They usually have the same providers and distribution channels.

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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, as these are rather expensive and specialised goods and services.

3. The signs

ELISA	Lisa
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).

Both marks are word marks, namely ‘ELISA’ (earlier mark) and ‘Lisa’ (contested sign). In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The earlier mark and the contested sign will be perceived by the English-speaking part of the public as female given names that have their roots in the given name ‘Elizabeth’. The words ‘ELISA’ and ‘Lisa’ are of average distinctiveness for the relevant goods and services.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate, for reasons of procedural economy and to avoid examining specific meanings (or lack of meaning) of the signs for various parts of the relevant public, to focus the comparison of the signs on the English-speaking part of the relevant public, for which, as explained above, the words ‘ELISA’ and ‘Lisa’ have the same root.

Visually and aurally, the signs coincide in the sequence of letters ‘LISA’, which constitute the last four out of five letters in the earlier mark and the entire contested sign. The signs differ in the first letter, ‘E’, of the earlier mark.

As the signs coincide in four out of five letters of the earlier mark and all the letters of the contested sign, they are considered visually and aurally highly similar.

Conceptually, the signs will be perceived as female given names that are derived from the same root, namely the name ‘Elizabeth’.

It is therefore considered that the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are identical and the contested services are partly identical, partly similar (to various degrees) and partly dissimilar. They target the general public and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high. The signs are visually, aurally and conceptually highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness.

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

The only difference between the signs is the first letter, ‘E’, of the earlier mark. This cannot outweigh the aforementioned visual, aural and conceptual similarities, as both signs will be perceived as female given names derived from the same given name, ‘Elizabeth’. This makes the signs under comparison very alike.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 16 337 602 ‘Lisa’.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark. Taking into account the principle of interdependence, there is a likelihood of confusion even for the services found to be similar to a low degree.

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

The opponent has also based its opposition on European Union trade mark registration No 13 365 994 .

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it is depicted in stylised letters. Moreover, it covers the same services in Classes 35 and 42 and a narrower scope of goods and services in Classes 9, 28 and 41. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services. With regard to Class 38, the scope of protection of European Union trade mark registration No 13 365 994 is different from that of European Union trade mark registration No 16 337 602. However, the contested services in Class 36 are dissimilar also to the services in Class 38 of European Union trade mark registration No 13 365 994. Therefore, also in this regard the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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

Plamen IVANOV

Michal KRUK

Judit NÉMETH

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.