Hosting services held to be connected to computer programming services

European Union
In Telefonica O2 Germany Gmbh & Co OHG v Office for Harmonisation in the Internal Market (OHIM) (Case T-150/10, September 29 2011), the General Court has annulled a decision of the First Board of Appeal of OHIM in which the latter had found that the goods and services covered by the marks at issue were not similar.

On March 16 2005 Loopia AB, the intervener before the General Court, filed an application for the registration of the word mark LOOPIA as a Community trademark (CTM). The services for which registration was sought were “hosting computer sites (web sites/web hotels)” in Class 42 of the Nice Classification.

On January 11 2006 Telefonica O2 Germany GmbH & Co OHG filed a notice of opposition based on the following CTMs:
  • the word mark LOOP, registered on September 5 2002 in Classes 38 and 42; and
  • the word mark LOOPY, registered on June 12 2001 in Classes 9, 38 and 42.
The goods and services covered by these two marks were related to information technology, computer programming services and telecommunication equipment.

The Opposition Division of OHIM upheld the opposition, but the First Board of Appeal annulled this decision on January 12 2010. The board stated that:
  • the services covered by the application for the LOOPIA mark were not similar to the goods and services covered by the LOOP and LOOPY marks; and
  • there was no likelihood of confusion, even if the marks at issue were visually and phonetically similar.
Telefonica O2 brought an action before the General Court, contesting the board's conclusions regarding the relevant public and the similarity of the goods and services.

First, the General Court held that the board should have taken into account the public concerned by the earlier trademarks LOOP and LOOPY in determining the relevant public. The court also stated, as did the board, that the goods and services at issue were of interest not only to professionals, but also to the general public, and involved a higher-than-average level of attention on their part.

Second, the court assessed the similarity of the goods and services at issue, notably taking into account whether they were complementary. The court pointed out that goods and services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other. In the present case, it ruled that there was a functional complementarity between hosting services and computer programming services. It stated that the goods and services at issue were connected since they all belonged to the field of information technology, in the sense that hosting services cannot exist without some of the goods or services covered by the earlier trademarks. Furthermore, the court found that the goods and services use the same distribution channels.

The court thus concluded that the Board of Appeals had erred in finding that there was no likelihood of confusion between the trademarks.
Richard Milchior, Granrut Avocats, Paris

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