“(2) A trade mark shall not be registered if because – …. (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”
“In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.” ‘Complementary’ was defined by the General Court (“GC”) in Boston Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)Case T-325/06 : “82 It is true that goods 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 such a way that customers may think that the responsibility for those goods lies with the same undertaking…”. 10. Additionally, the criteria identified in British Sugar Plc v James Robertson & Sons Limited (“Treat”) [1996] R.P.C. 281 for assessing similarity between goods and services also include an assessment of the channels of trade of the respective goods or services. 11. If goods or services fall within the ambit of terms within the competing specification, they are considered to be identical, as stated by the General Court (“GC”) in Gérard Meric v OHIM,case T-133/05 . 12. A great deal of the submissions made at the hearing, in writing and via evidence, focussed on the meanings of terms in the specifications. The significance of classification and the relevance of class numbers were considered by …the courts in Altecnic Ltd’s Trade Mark Application (CAREMIX) [2002] R.P.C. 639. In Avnet Incorporated v Isoact Limited [1998] F.S.R. 16 Jacob J held that: “In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”
“computer software, including software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data in compressed and uncompressed form”
“15. The parties take opposite positions in comparing these goods to the opponent’s Databases. The opponent says that a database is a collection of data so the applicant’s goods are identical to the opponent’s Databases. The applicant, however, says that databases are simply a way of storing or organising data and that the opponent’s argument is akin to saying that a warehouse is identical to whatever is stored within it. This may be true of Database programs but, as the applicant’s written submissions say, databases are sets of data. Sets of data could be recorded electronically e.g. on a CD or memory stick. There does not seem to be any difference between sets of data (i.e. databases) and data recordings: the content of both is data. The applicant has defined its audio, video and still and moving images and text as being data and so must be taken as such. The applicant’s goods Data recordings including audio, video, still and moving images and text in compressed and uncompressed form are identical to the opponent’s Databases.”
“I will compare these goods to the opponent’s telecommunications services. Mr Abrahams said at one point that “telecommunications means communicating by phone.”
“Conveyance over distance of speech, music and other sounds, visual images or signals by electric, magnetic or electro-magnetic means”