OPPOSITION No B 3 066 800

Targomo GmbH, August-Bebel-Str. 26-53, 14482 Potsdam, Germany (opponent), represented by JBB Rechtsanwälte Jaschinski Biere Brexl Partnerschaft Mbb, Christinenstr. 18/19, 10119 Berlin, Germany (professional representative)

a g a i n s t

Tagomo Digital Oy Ltd., Köydenpunojankatu 14, 20100 Turku, Finland (applicant), represented by Properta Asianajotoimisto Oy, Unioninkatu 7 B 17, 00130 Helsinki, Finland (professional representative).

On 23/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 800 is upheld for all the contested services.

2. European Union trade mark application No 17 925 310 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 925 310 for the word mark ‘TAGOMO’. The opposition is based on European Union trade mark registration No 17 284 951 for the word mark ‘Targomo’. The opponent invoked Article 8(1)(a) and (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.

a) The goods and services

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

Class 9: Data processing equipment, computers and computer peripheral devices; software (recorded and downloadable); data carriers of all types; all of the aforementioned products excluding products for banking and financial services.

Class 42: Creation, development, further development, maintenance, updating, design and installation of software; technical project studies and development of computers, computer hardware and computer networks; research in the field of computing, software and communications technology; rental of software; providing software for use via the internet and other communications networks; rental of computing capacities in computer centres; providing memory space on servers; consultancy with regard to the use of computer hardware and software, and communications technology of all kinds, in businesses, and on internal, external and global networks; software installation and maintenance of network systems and data technology installations; online maintenance and online updating of computer software; technical data analysis services; computer aided industrial analysis services; IT services; data mining; design and development of data display systems; design and development of systems for data input, output, processing, display and storage; design and development of data processing systems; software as a service [SaaS]; architecture and urban planning; all of the aforementioned services excluding services in relation to banking and financial services.

The contested services are, after the limitation filed by the applicant on 21/12/2018, the following:

Class 35: Search engine optimisation.

Class 38: Providing access to content, websites and portals.

Class 42: Homepage and webpage design, development and maintenance.

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 services in Class 35

The contested search engine optimisation consists of a methodology of strategies, techniques and tactics used to increase the quality and quantity of website traffic by increasing the visibility of a website/web page to users of a web search engine and the opponent’s IT services in Class 42 encompass the design, development and maintenance of web pages. The opponent submits that the generic term of development of systems for data processing includes the contested services. Nevertheless, a generic term in Class 42 that belongs to the information technology field cannot include a specific term in Class 35 in the field of advertising, even if they are to certain extent closely related. Therefore, although the compared services have a different nature and a different purpose, that of the contested services being for the promotion and sale of products and that of the opponent’s IT services being to enable clients in the creation, management and optimization of or access to information and business processes, they may have the same providers because the contested services are often offered by webmasters following the completion of a web page so as to increase its visibility in the internet. They also coincide in the relevant public and distribution channels. Therefore, the contested services are similar to the opponent’s IT services.

Contested services in Class 38

The contested providing access to content, websites and portals is similar to the opponent’s data processing equipment. Contrary to the applicant’s views, the contested services are, in a broad sense, telecommunication services that allow people to access or transmit data, as well as to communicate with one another by remote means. The opponent’s data processing equipment are devices that process data, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. This kind of equipment is, or can be, absolutely necessary for performing the services in question and, from the viewpoint of the consumer, it is indispensable for accessing and transmitting data when using the contested services. Therefore, there is a link between the opponent’s goods in Class 9 and the contested services in Class 38. They are similar because they are complementary and, even though their nature is different, their purposes, distribution channels and relevant consumers are the same.

Contested services in Class 42

The contested homepage and webpage design, development and maintenance are included in the broad category of the opponent’s IT services. Therefore, they are identical.

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 services found to be identical or similar are directed at the public at large and at 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

Targomo	TAGOMO
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 earlier mark and the contested signs are word marks, ‘Targomo’ and ‘TAGOMO’ respectively. They are meaningless for the relevant public and, thus, normally distinctive. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in lower- or upper-case letters, or in a combination thereof.

Visually and aurally, the signs coincide in the string of letters ‘TA*GOMO’ and differ in the third letter of the earlier mark, ‘R’, which has no counterpart in the contested mark. This letter is located in the middle part the earlier mark, where it is not particularly noticeable or audible. The significant coincidence of six out of the seven letters of the earlier mark, which constitutes the contested sign in its entirety, clearly creates a highly similar overall impression between the signs.

Therefore, the signs are visually and aurally highly similar.

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.

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 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.

e) Global assessment, other arguments and conclusion

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).

As seen above, the services are partly identical and partly similar. The earlier mark enjoys a normal degree of inherent distinctiveness vis-à-vis the relevant goods. Furthermore, the signs are aurally and visually highly similar, while conceptually they do not trigger any semantic content that may help to differentiate between them.

In view of the foregoing, there is a likelihood of confusion because the difference in only one letter is not sufficient to dispel the high visual and aural similarities between the signs, and, in particular, because the 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In the opposition decision of 14/12/2018, B 2 871 468, OMNICIDE v OMACIDE, the earlier mark was considered to have a low degree of distinctiveness and the degree of similarity between the signs was lower than in the present case. In the decision of 03/12/2001, B 117 780, QUENTEC v SENTEC, the signs are clearly less similar than in this case, especially in their beginnings. In the case of 17/04/2019, B 2 983 206, BEST CELL v , it was determined that the earlier mark had a low degree of distinctiveness — a circumstance that does not occur in the present case. Consequently, none of these cases are comparable.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 284 951. It follows that the contested trade mark must be rejected for all the contested services.

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 ground of the opposition, namely Article 8(1)(a) 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 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

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

Begoña URIARTE VALIENTE

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.