OPPOSITION Nо B 3 105 945

 

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative) 

 

a g a i n s t

 

Joselainen, Carlos Latorre 15 1b, 28039 Madrid, Spain (applicant).

On 28/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 105 945 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 123 021 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 18 123 021 ‘CANGOPAL’ (word mark). The opposition is based on international trade mark registrations designating the European Union No 924 565 and No 907 042, both for the word mark ‘GoPal’. 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 international trade mark registration designating the European Union No 924 565.

a) The goods and services

 

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

Class 9: Programs stored on data media, in particular for navigation apparatus.

The contested goods and services are the following:

 

Class 9: Software; logistics software; adaptive software; industrial software; enterprise software; collaborative software; embedded software; interactive software; computer software; communication software; computer software packages; interfaces for computers; interactive computer software; maintenance software; inventory software; networking software; dashboard software; business software; system software; development environment software; document management software; civil engineering software; mechanical engineering software; software for remote diagnostics; unified communications software; controlling software for computer printers; proxy server software; smart manufacturing software; web application software; business intelligence software; industrial controls incorporating software; process controlling software; computer software for computer aided software engineering; computer software for business purposes; factory automation software; computer software designed to estimate costs; computer programmes for data processing; file synchronization software; business technology software; computer software platforms; predictive maintenance software; workflow software; document automation software; machine control software; server-side software; data management software; decision-making software; communications server software; industrial automation software; file server software; media server software; application server software; print server software; reporting software; cloud server software.

Class 42: Design and development of computer software for logistics, supply chain management and e-business portals; development of computer software for logistics, supply chain management and e-business portals; design and development of computer software for logistics; upgrading of computer software; rental of computer software; computer software design; writing of computer programs; writing of computer software; software as a service [SaaS]; software customisation services; maintenance and repair of software; software as a service [SaaS] featuring software for deep learning; software as a service [SaaS] featuring software for machine learning; software design and development; configuration of computer software; computer software design and updating; installation and maintenance of computer programs; computer software development for others; rental of application software; rental of computer hardware and computer software; consultancy relating to software maintenance; computer software consultancy; updating and upgrading of computer software; maintenance of computer software; development and maintenance of computer software; software as a service [SaaS] featuring software for deep neural networks; updating of computer software; maintenance and upgrading of computer software.

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 terms ‘in particular’, used in the opponent’s list of goods, and ‘featuring’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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; logistics software; adaptive software; industrial software; enterprise software; collaborative software; embedded software; interactive software; computer software; communication software; computer software packages; interfaces for computers; interactive computer software; maintenance software; inventory software; networking software; dashboard software; business software; system software; development environment software; document management software; civil engineering software; mechanical engineering software; software for remote diagnostics; unified communications software; controlling software for computer printers; proxy server software; smart manufacturing software; web application software; business intelligence software; process controlling software; computer software for computer aided software engineering; computer software for business purposes; factory automation software; computer software designed to estimate costs; computer programmes for data processing; file synchronization software; business technology software; computer software platforms; predictive maintenance software; workflow software; document automation software; machine control software; server-side software; data management software; decision-making software; communications server software; industrial automation software; file server software; media server software; application server software; print server software; reporting software; cloud server software are included in the broad category of, or overlap with, the opponent’s programs stored on data media, in particular for navigation apparatus. Therefore, they are identical.

The contested industrial controls incorporating software are elements of modern industrial control systems that consists of various types of hardware and software. As such these contested goods overlap with the opponent’s programs stored on data media, in particular for navigation apparatus. Therefore, they are identical.

Contested services in Class 42

The contested design and development of computer software for logistics, supply chain management and e-business portals; development of computer software for logistics, supply chain management and e-business portals; design and development of computer software for logistics; computer software design; writing of computer programs; writing of computer software; software design and development; computer software design; computer software development for others; development of computer software; software customisation services; installation of computer programs are similar to the opponent’s programs stored on data media, in particular for navigation apparatus. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested upgrading of computer software; maintenance and repair of software; configuration of computer software; computer software updating; maintenance of computer programs; updating and upgrading of computer software; maintenance of computer software; maintenance of computer software; updating of computer software; maintenance and upgrading of computer software are similar to the opponent’s programs stored on data media, in particular for navigation apparatus. Both the contested services and the opponent’s goods are aimed at the same users using the same distribution channels. Furthermore, their providers are usually the same too.

Software as a service (SaaS) is a model for the distribution of software where customers access software over the Internet. The software could be hosted by its producers, or made available to clients on the internet and licensed on a subscription basis. As such the contested software as a service [SaaS]; software as a service [SaaS] featuring software for deep learning; software as a service [SaaS] featuring software for machine learning; software as a service [SaaS] featuring software for deep neural networks are similar to the opponent’s programs stored on data media, in particular for navigation apparatus as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

Advisory/consultancy services refer to providing advice that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user. In this regard, consultancy relating to software maintenance; computer software consultancy are services aimed at the same user as the opponent’s programs stored on data media, in particular for navigation apparatus and often provided by the same entities. Furthermore, they are complementary. Therefore, these goods and services are considered similar.

The contested rental of computer software; rental of application software; rental of computer hardware and computer software usually have the same commercial origin as the opponent’s programs stored on data media, in particular for navigation apparatus. They also target the same relevant public through the same outlets. Therefore, they are lowly similar.

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 and at business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 

c)  The signs

 

GoPal	CANGOPAL
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.

 

Both signs are word marks and their word elements ‘GoPal’ and ‘CANGOPAL’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public such as Spain.

The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. However, as in the present case neither the element ‘GoPal’, nor its components ‘Go’ and ‘Pal’ reveal some meaning to the public under analysis, the use of upper- and lower-case letters in the earlier mark will not affect its perception by the consumers and they will not dissect it.

Consequently, the signs, perceived as a whole, do not convey any clear meaning for the public under analysis and are, therefore, distinctive.

Although consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52).

 

Visually and aurally, the signs coincide in the sequence of letters and their pronunciation ‘GOPAL’, that is in five out of eight letters/sounds. They differ in the letters and their sounds ‘CAN’ present only in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

 

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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods and services are partly identical and partly similar to varying degrees to the opponent’s goods. They are directed at public at large and at professionals whose degree of attention may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs. In particular, the signs coincide in their distinctive verbal component ‘GOPAL’, which is the only verbal element of the earlier mark and is totally reproduced in the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), for example design, development and maintenance of software.

 

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 well founded on the basis of the opponent’s international trade mark registration designating the European Union No 924 565. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

As the earlier right No 924 565 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).

 

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

 

 

Cristina SENERIO LLOVET

Tzvetelina IANTCHEVA

Maria SLAVOVA

 

 

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.