OPPOSITION No B 2 778 507

Logipix Kft., Budapest, Késmárk utca 11-13., 1158, Hungary (opponent), represented by Akos Valyi, Budapest, Hermina út 17. 8. em., 1146, Hungary (professional representative)

a g a i n s t

Logistica & Rfid Systems S.L., Carrer Jacint Verdaguer, num. 49-51, 08550 Hostalets de Balenyà, Spain (applicant), represented by Cristina Morales Ruiz, Ros de Olano, 6, Entrl 1º, 08012 Barcelona, Spain (professional representative)

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 778 507 is upheld for all the contested services.

2.        European Union trade mark application No 15 622 624 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 622 624 . The opposition is based on International trade mark registration No 1 124 985 designating the European Union ‘LOGIPIX’ (word mark).

The opponent invoked Article 8(1)(b) and 8(5) 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 services

The services on which the opposition is based are, inter alia, the following:

Class 42: Scientific and technological services and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software. 

The contested services are the following:

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 42

The contested Design services; IT services cover, as a broader categories, the opponent´s design of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested science and technology services are identical to the opponent´s Scientific and technological services, since the same services are referred to by using synonym expressions.

The contested testing, authentication and quality control are worded broadly and, depending on their exact nature, they could be included in several of the general categories protected by the contested sign (e.g. testing includes material testing, as well as software testing). The contested testing is a process used to identify characteristics or problems. It includes, inter alia, software testing and website usability testing services. The contested authentication is the action of establishing something as genuine or valid. These services include, inter alia, the authentication of information, messages and data. The contested quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. All these contested services include, inter alia, services that are, by nature, IT services, and they all may be part of the process by which new IT products are checked before being brought to market. Consequently, some testing, authentication and quality control services are inherently included in the opponent’s design and development of computer hardware and software. Therefore, the contested testing, authentication and quality control, when related to the IT field, overlap with the opponent’s design and development of computer hardware and software. Consequently, 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 services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the areas of science, technology or IT.

The public’s degree of attentiveness may vary from average to high, depending on the price and degree of specialisation of the purchased services.

3. The signs

LOGIPIX
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.

Given that in some languages such as English, ‘LOGI’ may bring to mind various notions (such as logic) that may affect the distinctiveness of the elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs will be perceived as invented and with no concept, since this represents the best-case scenario for the opponent. This is the case for, at least, the Hungarian-speaking, the Spanish-speaking and the Polish-speaking parts of the public.

For the part of the public referred to above, the words forming the signs are meaningless, and of average distinctive character in relation to the services involved.

The contested sign has a graphic particularity, consisting of the fact that the two dots of the letters “i” in the word are linked in the form of a curved line. This curved line will be perceived as a merely decorative element. Therefore, the contested sign is formed by a distinctive verbal element and a non-distinctive curved line.

In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, also for this reason, the weight of the curved line and the differing typeface in the contested mark is limited, as the verbal part has more impact.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In this case, it is important to note that the signs coincide on, inter alia, their beginnings (See comparison below)

Visually, the signs coincide in their first letters “LOGI” and in their sixth letter, which is letter “I”. They differ in their fifth and seventh letters, namely “P” and “X” in the earlier mark and “F” and “D” in the contested sign.

They also differ in colour and typeface, and in the curved line in the contested sign, referred to above.

However, according to the explanations above regarding the limited impact of the differing curved line, and the greater impact of the elements at the beginning of the marks (i.e. left part), where the main coincidences are found, it is considered that the marks are visually similar to, at least, an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters “l-o-g-i”, present identically at the beginnings of both signs, and in the sound of their sixth common letter “i”. It must be recalled the fact that the signs share the same sequence of vowels “o-i-i”, and the same number of syllables (i.e. three). Therefore, they coincide in rhythm and intonation.

The marks differ aurally in the sound of their letters “p” and “x” of the earlier mark and “f” and “d” of the contested sign.

The signs are aurally similar to, at least, 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.

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.

According to the opponent, the earlier mark is well known, and enjoys an enhanced scope of protection. However, aside from a collage of photos showing the opponent’s brand purportedly present at trade shows, the opponent did not file any evidence to support this claim.  Clearly the collage submitted in this regard does not satisfy this claim as it has no information whatsoever about the actual recognition of the mark.

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 services 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 services compared are identical, and the signs are visually and aurally similar to, at least, an average degree, and cannot be compared conceptually.

For the reasons described in section c) above (i.e. greater impact of verbal elements over figurative elements, and the impact of the coincidences at the beginnings of the marks), it is considered that the coincidences between the marks are of greater weight and impact than their differing characteristics

The public’s degree of attentiveness may vary from average to high.

The average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting services found to be identical come from the same or economically-linked undertakings. Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of the services involved, are clearly enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting services come from the same or economically-liked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-speaking, Spanish-speaking and Polish-speaking parts 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 No 1 124 985 designating the European Union ‘LOGIPIX’ (word mark).  It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.