OPPOSITION No B 3 101 672

EOS GmbH Electro Optical Systems, Robert-Stirling-Ring 1, 82152 Krailling/München, Germany (opponent), represented by Beckord & Niedlich Patentanwälte Partg mbB, Marktplatz 17, 83607 Holzkirchen, Germany (professional representative)

a g a i n s t

Oasis Smart Sim Europe, 145 rue du Président Roosevelt, 78100 Saint Germain en Laye, France (applicant).

On 09/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 672 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 099 112 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 18 099 112 ‘EOS’ (word mark). The opposition is based on European Union trade mark registration No 13 411 971 and German trade mark registration No 2 075 778, both for the word mark ‘EOS’. 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.

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 13 411 971.

a) The goods and services

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

Class 9: Measuring, signalling and checking (supervision) instruments, lasers (not for medical purposes); apparatus for recording, transmission or reproduction of sound or images; recorded and unrecorded data carriers; data processing equipment and computers; data processing programs; all the aforesaid goods being in relation to additive manufacturing.

Class 42: Technological design services; mechanical engineering and/or engineering and/or chemistry services and/or mechanics; design and development of computer software, IT services and/or mathematics services; installation of computer software; all the aforesaid services being in relation to additive manufacturing.

The contested goods and services are the following:

Class 9: Software; computer programmes for use in telecommunications; downloadable software; computer software; middleware; embedded operating software; embedded software; telecommunications software; computer software for inter-network accounting in the telecommunications field; SIM cards.

Class 38: Telecommunication services; communication of information by satellite; data transmission services over telecommunications networks; electronic network communications; interactive communication services; interactive telecommunications services; information services relating to telecommunications.

Class 42: Programming of telecommunications software; software development, programming and implementation; computer network services; advisory services relating to computer software design; advisory and information services relating to computer software; advice and development services relating to computer software; computer programming; computer programming for telecommunications; computer programming for the internet; computer programming services for data warehousing; computer software programming services; configuration of computer systems and networks; consultancy in the field of software design; authentication services for computer security; software as a service [SaaS] services; hosting services, software as a service, and rental of software; design of software for embedded devices; updating of software for embedded devices.

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.

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.

Contested goods in Class 9

The contested goods are different types of software for various purposes: software; computer programmes for use in telecommunications; downloadable software; computer software; middleware; embedded operating software; embedded software; telecommunications software; computer software for inter-network accounting in the telecommunications field. Although the opponent’s goods are limited to additive manufacturing, this does not automatically rule out a certain degree of similarity between the abovementioned contested goods and the opponent’s data processing programs. These are complementary products, which coincide in producers, relevant public and distribution channels. Therefore, they are similar.

The contested SIM cards are smart cards that store data, contact information and text messages. They share some commonalities with the opponent’s data processing equipment and computers (being in relation to additive manufacturing). The contested goods and the opponent’s goods can also have the same manufacturers and distribution channels and are complementary to each other. Therefore, they are similar.

Contested services in Class 38

The contested services in Class 38 are, in a broad sense, telecommunications services. These cannot be provided without the use of certain products, which include the opponent’s data processing equipment (being in relation to additive manufacturing) in Class 9. Being indispensable, they are complementary goods within the meaning of established case-law. In addition, they share the purpose of accessing data, and coincide in distribution channels and relevant public. Therefore, there is a link between the opponent’s goods in Class 9 and the contested services in Class 38. Even though their natures are different, they are similar.

Contested services in Class 42

These contested services are at least similar to the opponent’s design and development of computer software, IT services; installation of computer software; all the aforesaid services being in relation to additive manufacturing in the same class. They share the same distribution channels, target the same relevant public and are often provided by the same undertakings.

For example, software as a service [SaaS] services are at least similar to the opponent’s design and development of computer software, because the developers of search engines, software as a service (SaaS) and other types of software, not only sell the software they develop, but also install and maintain it. They also offer rental of computer programs. Therefore, these services can have the same distribution channels and end users and may be offered by the same providers.

b) The signs

EOS	EOS
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The Court has set out the essential principle that 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 signs are identical, and this will make it impossible to avoid (a likelihood of) confusion with respect to goods and services that are similar. Indeed, the relevant public – even if they display a higher degree of attentiveness – when encountering two marks consisting of the same distinctive verbal element ‘EOS’, covering similar goods and services, will find it highly difficult, if not impossible, to distinguish the different commercial origins of these goods and services.

Therefore, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for all the goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 411 971. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier EUTM No 13 411 971 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 opponent (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 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, 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

Beatrix STELER

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

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.