OPPOSITION No B 2 689 399

Simon, S.A., Calle Diputación, 390-392, 08013 Barcelona, Spain (opponent), represented by R. Volart Pons y Cia S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)

a g a i n s t

SIA ‘Mint’, Slokas Street 12A-7, Riga, 1048, Latvia (applicant), represented by Law Firm Fort, 8-4 Antonijas Street, Riga, 1010, Latvia (professional representative).

On 05/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 399 is upheld for all the contested goods, namely:

Class 9:         Downloadable software in the nature of a mobile application for internet based social networking, introducing and dating.

2.        European Union trade mark application No 14 901 334 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 901 334 in Class 9. The opposition is based on European Union trade mark registration No 4 469 987. 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.

1. The goods

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

Class 9:         Telephone apparatus; computer programs (downloadable software) and computers.

The contested goods are the following:

Class 9:         Downloadable software in the nature of a mobile application for internet based social networking, introducing and dating.

Contested goods in Class 9

The contested downloadable software in the nature of a mobile application for internet based social networking, introducing and dating is included in the broad category of the opponent’s computer programs (downloadable software). Therefore, they are identical.

2. 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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention for the goods at issue will be average.

3. The signs

	Loft
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.

The verbal elements of the earlier mark are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking public.

The earlier mark is a figurative mark. It has three verbal elements: ‘Simon’, followed by the number ‘73’ and the word ‘LOFT’, all written in a rather standard font in black. The relevant public will understand the word ‘Simon’ as a male given name. The number ‘73’ may be understood as indicating a version number in relation to the goods. The element ‘Loft’ of the earlier mark and the contested sign will be understood by the public at large as ‘the space inside a roof’, ‘a gallery, one for the choir in a church’, ‘a room over a stable used to store hay’, ‘an upper storey of a warehouse or factory, when converted into living space’, ‘a raised house or coop in which pigeons are kept’, ‘(in golf) the angle from the vertical made by the club face to give elevation to a ball’, ‘elevation imparted to a ball’ or ‘a lofting stroke or shot’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a word mark consisting of the verbal element ‘Loft’.

Neither the earlier mark nor the contested mark has any element that could be considered clearly more distinctive or more dominant than other elements.

Visually and aurally, the signs coincide in the word ‘Loft’ and differ in the elements ‘Simon 73’ of the earlier mark. The contested sign is fully contained in the earlier mark as its final verbal element (of three verbal elements in total). The first two verbal elements of the earlier mark are ‘Simon’ and ‘73’. The coinciding element performs an independent role in both signs.

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

Conceptually, the signs are similar to an average degree due to the coincidence of the element ‘Loft’ in the signs, as described above, considering that the remaining elements of the earlier mark, ‘Simon’ and ‘73’, convey different concepts.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §18), in particular the similarity between the marks and the similarity between the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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).

In the present case, it has been established that the contested goods are identical to the opponent’s goods. The signs are visually, aurally and conceptually similar to an average degree, to the extent that they coincide in the word ‘Loft’, which is distinctive for the goods in question.

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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 469 987. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.