2018年10月3日

UKIPO consider reversed marks in opposition decision


Applicant's Marks

VenturePro and Venture Pro

Earlier Mark

ProVenture

Class 9: Financial management software; Computer software programs; Computer software programs for database management.

Class 36: Providing investors with financial information; Finance and credit information; Financial analysis; Investment portfolio management services; Provision of financial information for professionals in the field of portfolio management, for portfolio management.

Class 38: Provision of access to an online database system, all relating to company information.

Class 35: Business management, business administration, provision of business information, office functions.

In September 2016, Angelpro Limited filed two UK applications for the marks VenturePro and Venture Pro in classes 9, 35, 36 and 38. ProVenture Consulting Limited, the owner of the earlier UK trade mark ProVenture registered in class 35, opposed the trade mark applications claiming that the marks and the goods and services covered by Angelpro's applications were similar to its earlier right and that there was a likelihood of confusion on the part of the public. Additionally, ProVenture claimed that its earlier trade mark had acquired a reputation in the UK market because of its use since 2006 and that it had acquired a valuable goodwill under the mark ProVenture. Angelpro put ProVenture to proof of use of their registered trade mark.

Following ProVenture's opposition, Angelpro deleted class 35 from its application. At the Hearing before the Registrar, ProVenture stated that 'Financial management software' in class 9 and all the services listed in class 36 were no longer a concern to the opponent. Therefore the Hearing Officer had to consider the similarity of the remaining terms.

As regards 'computer software programs and computer software programs for database management', the Hearing Officer found that the goods were dissimilar to the services listed in ProVenture's class 35, because software and business services are different in nature and there is no evidence that they are complementary. For example, the Hearing Officer clarified that 'software apps are not important or indispensable for the provision of business consultancy services [and they are not] a natural extension of business consultancy services'.

Regarding 'Provision of access to an online database system, all relating to company information', the Hearing Officer found that ProVenture did not show use of their earlier mark in relation to the provision of information about businesses. Consequently the registration does not cover 'provision of business information'. The Hearing Officer also clarified that the services that fall under class 38 are about providing the means of communication and not the provision of the information accessed by those communication means. Therefore, it is not possible to interpret 'Provision of access to an online database system, all relating to company information' as meaning 'provision of company information'. Hence, those services are not similar.

In conclusion, none of the goods or services covered by Angelpro's applications were found similar to those covered by the earlier registered trade mark so the opposition was rejected. The Hearing Officer also rejected the claim that ProVenture had acquired a significant reputation in the market, as the evidence produced by the opponent showed that ProVenture operated in a very modest share of the market.

Case Ref: O/532/18

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