OPPOSITION No B 3 101 714

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Elanor spol. s r.o., Jemnická 1138/1, 14000 Praha 4, Czech Republic (applicant), represented by Tomáš Jindra, Rybná 9, 110 00 Praha 1, Czech Republic (professional representative).

On 25/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 714 is partially upheld, namely for the following contested goods and services:

Class 9: All the goods in this Class.

Class 35: Retail services in relation to downloadable electronic publications.

Class 42: All the services in this Class.

2. European Union trade mark application No 18 099 513 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 18 099 513 for the word mark ‘ELANOR’. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 458 617 for the word mark ‘ELEANOR’. 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 two earlier rights which consist of the same sign and which share the same scope of protection as regards the goods and services, the only difference being their territorial scope,.The Opposition Division will first examine the present opposition on the basis of the international trade mark registration designating the European Union No 1 458 617.

a) The goods and services

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

Class 9: Voice processing software; voice controlled software; wireless controls for monitoring and controlling the functions of other electronic devices; voice command and recognition software, voice to text conversion software and voice activated software applications; software for personal assistance; computer software for controlling independent voice controlled information devices and personal assistance devices; computer application software for wireless electronic devices, namely software for controlling, integrating, operation, connecting, and managing voice-controlled information devices, namely cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; computer software for accessing, browsing and searching online databases, audio, video and multimedia content; software for controlling vehicle functions; software for transmitting vehicle conditions and data; computer software for connecting and controlling Internet of Things (IOT) electronic devices.

Class 38: Telecommunications services, namely electronic transmission of information and data; communication services for transmitting, caching, accessing, receiving, downloading, streaming, transmitting, sharing, displaying, formatting, mirroring and transmitting text, images, audio, video and data via telecommunications networks, wireless communication networks and the Internet.

Class 42: Design and development of computer programs and software; Platform as a service [PaaS] with computer software platforms for voice command and voice recognition software, voice-to-text conversion software and voice-controlled software applications; Platform as a service [PaaS] with computer software platforms for personal assistance software; Platform as a service [PaaS] with computer software platforms for wireless communication software for transmitting voice, audio, video and data; Software as a service [SaaS] with computer software for controlling independent voice-controlled information and personal assistance devices; Software as a service [SaaS] featuring computer software for personal information management; Software as a Service [SaaS], featuring computer software used for accessing, browsing and searching online databases, audio, video and multimedia content, software applications, software application marketplaces; design, development and maintenance of computer software for voice and language recognition; providing computer services, namely development, programming and implementation of software for controlling, integrating, operating, connecting, and managing voice-controlled information devices, namely cloud-connected and voice-controlled electronic devices and electronic personal assistance devices; providing customized computer search services, namely searching and retrieving information at the user's specific request via the Internet; computer services, namely remote management of devices over computer networks, wireless networks or the Internet.

Class 45: Personal concierge services for third parties.

The contested goods and services are the following:

Class 9: Data processing apparatus; software; office and business applications; data and file management and database software; downloadable applications for use with mobile devices; application software; multimedia software; utility software; data storage devices and media; electronic publications recorded on computer media; electronic publications, downloadable; operating systems; computer operating systems; monitors [computer programs]; computer software applications, downloadable; computer software in the field of electronic publishing; downloadable cloud computing software; cloud computing software; computer hardware.

Class 35: Retail services in relation to downloadable electronic publications; updating and maintenance of data in computer databases; updating and maintenance of information in registries; invoicing; marketing; product marketing; marketing in the framework of software publishing; electronic publication of printed matter for advertising purposes; business information; computer assisted business information; collection of commercial information; provision of commercial information; collecting information for business; provision of business information; business advisory and information services; professional business consultancy; preparation and completion of income tax returns; payroll preparation; computerised payroll preparation; psychological testing for the selection of personnel; compilation of information into computer databases; tax filing services; outsourcing services [business assistance]; systemization of information into computer databases; book-keeping; company record-keeping; computerized file management; company record keeping [for others]; employee record services; commercial information agency services; outsourcing services in the field of business operations; outsourcing services in the nature of arranging service contracts for others; human resources consultancy; personnel management consultancy; human resources management and recruitment services; serving as a human resources department for others; human resources management; payroll assistance; personnel management and employment consultancy; data processing services in the field of payroll.

Class 42: Writing and updating computer software; updating of computer software for others; computer rental and updating of computer software; research, development, design and upgrading of computer software; installation, maintenance, updating and upgrading of computer software; cloud computing; providing virtual computer systems through cloud computing; conversion of computer programs and data, other than physical conversion; duplication of computer programs; recovery of computer data; computer programming; information technology [it] consultancy; providing technical advice relating to computer hardware and software; computer technology consultancy; data security consultancy; providing information on computer technology and programming via a web site; rental of computer software; rental of application software; server hosting; software as a service [SaaS]; consulting services in the field of software as a service [SaaS]

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 ‘namely’, used in the opponent’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.

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; office and business applications; data and file management and database software; downloadable applications for use with mobile devices; application software; multimedia software; utility software; operating systems; computer operating systems; monitors [computer programs]; computer software applications, downloadable; computer software in the field of electronic publishing; downloadable cloud computing software; cloud computing software include as broader categories, or overlap with, the opponent’s computer software for accessing, browsing and searching online databases, audio, video and multimedia content. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested data processing apparatus; electronic publications recorded on computer media; electronic publications, downloadable; computer hardware are similar to the opponent´s a computer software for accessing, browsing and searching online databases, audio, video and multimedia content as they share the same distribution channels, relevant public and producers. Moreover, they are complementary.

The contested data storage devices and media are similar to the opponent´s design and development of computer programs and software in Class 42 as they coincide in provider and relevant public. Moreover, they are complementary.

Contested services in Class 35

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Therefore, the contested retail services in relation to downloadable electronic publications are similar to a low degree to the opponent’s computer software for accessing, browsing and searching online databases, audio, video and multimedia content.

The rest of the contested services in this class can be divided into the following groups:

(i) ‘Business management; business administration and office functions that include the contested updating and maintenance of data in computer databases; updating and maintenance of information in registries; invoicing; business advisory and information services; professional business consultancy; preparation and completion of income tax returns; payroll preparation; computerised payroll preparation; psychological testing for the selection of personnel; compilation of information into computer databases; tax filing services; outsourcing services [business assistance]; systemization of information into computer databases; book-keeping; company record-keeping; computerized file management; company record keeping [for others]; employee record services; outsourcing services in the field of business operations; outsourcing services in the nature of arranging service contracts for others; human resources consultancy; personnel management consultancy; human resources management and recruitment services; serving as a human resources department for others; human resources management; payroll assistance; personnel management and employment consultancy; data processing services in the field of payroll.

(ii) ‘Business and commercial information services’ that include the contested business information; computer assisted business information; collection of commercial information; provision of commercial information; collecting information for business; provision of business information; commercial information agency services.

(iii) ‘Advertising and marketing services’ which include the contested marketing; product marketing; marketing in the framework of software publishing; electronic publication of printed matter for advertising purposes.

All these services are very specific services performed by skilled professionals with the aim of improving or assisting the running of a business. They are fundamentally different in nature and purpose from the manufacture of the opponent´s goods in Class 9 (specific software) or services in Class 38 (telecommunication services), Class 42 (IT services) and Class 45 (concierge services). The goods and services in question are produced/provided by different undertakings, and are sold through different distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are considered dissimilar.

The Opposition Division cannot concur with the opponent´s assertion that the contested advertising services in Class 35 and the opponent´s services in Class 38 are similar as they have converged because ‘undertakings in the telecommunication field provide statistics to clients on of when their websites are visited´. In particular, the contested advertising, consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client's position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client's needs, provide all the necessary information and advice for marketing the client's goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

On the other side, the opponent’s services in Class 38 cover telecommunication services, which are those that allow people to communicate with one another by remote means. These services consist of providing consumers the technical requirements in order to enable their access to a wide range of information resources and services provided on-line. Telecommunications is a service usually provided by telecommunication companies who are responsible for the technical aspects the communication system must fulfil, such as performance-related issues, reliability issues, and availability issues. The Opposition Division finds quite unlikely that consumers may think that these two services could come from the same undertakings. Therefore, the opponent’s argument has to be dismissed.

Contested services in Class 42

The contested writing and updating computer software; updating of computer software for others; updating of computer software; research, development, design and upgrading of computer software; installation, maintenance, updating and upgrading of computer software; computer programming; information technology [IT] consultancy; computer technology consultancy; data security consultancy are all contained in, or overlap with, the opponent´s broader category of design and development of computer programs and software. Therefore, they are identical.

The contested software as a service [SaaS] includes, as a broader category, the opponent’s Software as a Service [SaaS], featuring computer software used for accessing, browsing and searching online databases, audio, video and multimedia content, software applications, software application marketplaces. Since the Office cannot dissect ex officio the broad category of the contested services , they are considered identical to the earlier services.

The contested rental of computer software; rental of application software; consulting services in the field of software as a service [SaaS] are included in, or overlap with, the opponent’s Software as a Service [SaaS], featuring computer software used for accessing, browsing and searching online databases, audio, video and multimedia content, software applications, software application marketplaces. Therefore, they are identical.

The contested computer rental; cloud computing; providing virtual computer systems through cloud computing; conversion of computer programs and data, other than physical conversion; duplication of computer programs; recovery of computer data; providing technical advice relating to computer hardware and software; providing information on computer technology and programming via a web site; server hosting are similar to the opponent´s design and development of computer programs and software. Most of these services have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, some of them are complementary.

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 similar to varying degrees are directed at the public at large (e.g. data processing apparatus or software) and at business customers with specific professional knowledge or expertise in the field of IT (e.g. conversion of computer programs and data, other than physical conversion; duplication of computer programs). The degree of attention varies from average to high depending on the price, frequency of purchase and level of specialisation of the goods and services.

c) The signs

ELEANOR	ELANOR
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). This applies by analogy to international registrations designating the European Union. 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, and for procedural economy reasons, the Opposition Division finds appropriate to focus the comparison on the German-speaking part of the public.

Although ‘ELEANOR’ and ‘ELANOR‘ do not exist as such in the context of the relevant language, it is very likely to think that a great part of the general public will associate both terms with ‘ELEANORE’ which is a common female given name, whose variant forms are, inter alia, Eléanor, Eleonore, Elanor, Elinore, Ellinore, etc. (as proven by the opponent through Annex 3 ). As such terms do not have a direct relation with the goods and services protected by the signs, they are distinctive to an average degree.

Visual and aurally, the signs at issue nearly have the same length (seven and six letters, respectively). Irrespective of the different pronunciation rules in different parts pf the relevant territory, they coincide in the sequence of letters/sounds ‘EL*ANOR’, and only differ in the additional third letter/sound, ‘E’, of the earlier mark.

Furthermore, the fact that the marks differ in only a letter/sound does not impact much on their visual and aural similarity, considering that this difference lies in the middle of the signs, whereas their beginnings and endings are the same.

Therefore, the signs are visually and aurally similar to a very high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same female name, the signs are conceptually identical.

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 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 average.

e) Global assessment, other arguments and conclusion

The goods and services have been found to be partly identical, partly similar to varying degrees and partly dissimilar and they are directed both at the professional public and the general public that will display a degree of attention ranging from average to high.

As the sole difference between the sign is the additional letter ‘E’ placed in the middle of the earlier mark, the signs are visually and aurally similar to a very high degree and conceptually identical as both will be associated with the same female name.

The earlier mark enjoys an average degree of distinctiveness.

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). It is very likely that consumers will not notice the difference in the vowel ’E’ (in the middle of the earlier mark) when they encounter the signs in the market.

This holds true even for 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).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s, international trade mark registration No 1 458 617 designating the European Union. 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 from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark. The opposition is also successful as regards the goods and services found to be similar only to a low degree, as the similarities between the signs are overwhelming and counteracting the low degree of similarity between some of the goods and services, this according to the interdependence principle mentioned above.

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 the German trade mark registration No 30 2018 106 865 for the woprd mark ‘ELEANOR’

Since this mark covers the same scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, 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

Marta GARCIA COLLADO

Claudia SCHLIE

Saida CRABBE

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.