OPPOSITION DIVISION
OPPOSITION No B 2 617 796
Atos Spain, S.A., Albarracín, 25, 28037 Madrid, Spain (opponent), represented by
Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional
representative)
a g a i n s t
Edag Production Solutions GmbH & Co. KG, Reesbergstraße 1, 36039 Fulda,
Germany (applicant), represented by Schwabe Sandmair Marx Patentanwälte
Rechtsanwalt Partnerschaft mbB, Joseph-Wild-Straße 20, 81829 München,
Germany (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 617 796 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 100 481 is rejected for all the
contested goods and services. It may proceed for the remaining goods and
services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 100 481, the word mark iSILOG,
namely against all goods in Class 9 and some services in Class 42. The opposition is
based on Spanish trade mark registration No 3 049 812, the word mark SIS-LOG
SISTEMAS LOGISTICOS. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer program for the management of cards; Scientific, nautical,
surveying, photographic, cinematographic, optical, weighing, measuring, signalling,
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checking (supervision), life-saving and teaching apparatus and instruments;
apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or controlling electricity; apparatus for recording, transmission or
reproduction of sound or images; magnetic data carriers, recording and optical discs;
mechanisms for coin-operated apparatus; cash registers, calculating machines, data
processing equipment and computers; fire-extinguishing apparatus; computer
programs; screens (for computers and television); keyboards (computing); mouses
(computing), CD-ROM.
Class 42: Computer services; Consultancy services in the field of computer
programming; Technical consultancy services in the fields of computing and
electronics
The contested goods and services are the following:
Class 9: Computer software for creating models for production automation, computer
software for automation development, simulation software for production and
logistics systems, computer software for analysing production data, computer
software for detecting and optimising energy consumption and raw material costs,
computer software for distribution logistics.
Class 42: Technical project studies; Computer analysis.
Contested goods in Class 9
The contested Computer software for creating models for production automation,
computer software for automation development, simulation software for production
and logistics systems, computer software for analysing production data, computer
software for detecting and optimising energy consumption and raw material costs,
computer software for distribution logistics are included in the broad category of the
opponent’s computer programs. Therefore, they are identical.
Contested services in Class 42
The contested Computer analysis are included in the broad category of the
opponent’s Computer services. Therefore, they are identical.
The contested Technical project studies consist of broad categories of services,
which may be applied to several technical, industrial and scientific areas. They
promote the research and development of technologies and resources in the
scientific, technological and/or industrial fields. These activities involve the acquisition
of new knowledge with the objective of using it for developing new projects,
processes or services or for bringing about a significant improvement in existing
processes or services. Therefore, they overlap with the opponent’s Technical
consultancy services in the fields of computing and electronics which is also a vast
category of services, and covers activities that directly relate to the disciplines of
technology. These services partly coincide in their technological nature since, for
instance, the opponent’s technical consultancy services in the fields of computing
and electronics may be specifically applied to numerous fields of application and
market sectors (such as those in which the contested services are rendered); in
addition, the broad categories of the contested services indicate that they might
comprise services which may be applied in several areas and also in the field of
consultancy. Therefore these services overlap and are considered identical.
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b) 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 and services found to be identical or similar are
directed at the public at large but also at business customers with specific
professional knowledge or expertise. The degree of attention may vary from average
to high depending on the price and frequency of purchase of these goods and
services, as for instance technical consultancy services can be rendered over a long
period of time and be quite expensive.
c) The signs
SIS-LOG SISTEMAS LOGISTICOS
iSILOG
Earlier trade mark Contested sign
The relevant territory is Spain.
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 earlier mark is a word mark consisting of the words SIS-LOG SISTEMAS
LOGISTICOS. The third and the fourth verbal elements are the ‘long version’ of the
first and second element, as those are composed respectively of the first three letters
of the words SISTEMAS LOGISTICOS.
The contested sign is a word mark consisting of the letters iSILOG.
Word marks are protected as such, independently of the type script used.
The words SISTEMAS LOGISTICOS in the earlier sign are the ‘explanation’ for the
first part of the sign, where those words are abbreviated as SIS LOG, and joined by a
hyphen. These words of the earlier sign will be understood as referring to the ways
and methods necessary to organise a company and its business. Bearing in mind
that the relevant goods and services are ‘technology and IT related’, and are also
directed at business consumers with specific professional knowledge, these words
are considered weak for part of these goods and services, namely for ‛computer
programs; Computer program for the management of cards and Computer services;
Consultancy services in the field of computer programming; Technical consultancy
services in the fields of computing and electronics, as these words can refer for
instance to computer programs and services for the logistical control of a company
and /or its business.
The Court has held that, although the average consumer normally perceives a mark
as a whole and does not proceed to analyse its various details, the fact remains that,
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when perceiving a word sign, he will break it down into elements which, for him,
suggest a specific meaning or which resemble words known to him (13/02/2007, T
256/04, Respicur, EU:T:2007:46, § 57).
In this sense, the suffix ‘LOG’ will be recognised in both signs. In the earlier right,
because it is separated by a hyphen from the letters SIS. The contested sign will be
pronounced in three syllables, namely ‘i-SI-LOG’. That will facilitate the perception of
the concept(s) carried by the word ‘LOG’ in the contested sign in the same manner
as in the earlier mark, especially since the combination of the letters ‘i-SI’ and ‘LOG’
does not form an expression that would go beyond the mere sum of its parts.
‘LOG’ is either an abbreviation for the internationally known word ‘logistics’ (or
‘logistica/o’ in Spanish) as demonstrated in the earlier right itself or when used in the
context of computers and software, it means a record of performance or also to
connect and disconnect from a PC. Therefore LOG will be recognised by at least part
of the Spanish public as having a meaning. Bearing in mind that the relevant goods
and services can also be used in business and IT environments, this element is
hence considered weak.
The letter ‘i’ of the contested sign is not separated from the remaining letters ‘SILOG’,
and as the sign is a word mark, the sign is protected as such, and not the particular
typescript. However, the letter ‘i’ at the beginning of the contested sign might be
associated by part of the relevant public with something related to the internet,
interactive or intelligent. To that extent, the distinctiveness of this letter is weak for the
contested goods in Class 9 and the contested services in Class 42 as that letter can
imply connection to the internet, and/or interactive, intelligent (smart) functionalities.
The contested mark has no element that could be considered more dominant
(visually eye-catching) than other elements.
Visually, the signs coincide at the beginning in the letters ‘S’ and ‘I’, albeit in reverse
order, and the verbal element ‘LOG’, which however is of weak distinctive character
for part of the goods and services. The first six letters of the signs are composed of
the identical letters, albeit the first three letters are respectively ‘SIS’ and ‘ISI’.
Therefore the difference at the beginning is limited to two letters ‘S’ resp. two letters
‘I’, and then the weak verbal elements ‘SISTEMAS LOGISTICOS’.
The reverse order resp. number of the letters I and S is of less importance, as the
two letters are nevertheless identically contained in the first part of the signs.
Furthermore, they coincide in ‘LOG’, identically contained in the first half of the earlier
right and at the end of the contested sign. The weak words SISTEMAS
LOGISTICOS will have less impact concerning the visual similarity. Therefore the
Opposition Division concludes that they are visually similar at least to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛S’ and ‘I’,
albeit in reverse order, and the verbal element ‘LOG’, which however is of weak
distinctive character for part of the goods and services, present identically in both signs.
The pronunciation differs in the sound of the additional letters ‛S’ respectively ‘I’ and the
however weak words SISTEMAS LOGISTICOS of the earlier sign, which have no
counterparts in the contested mark.
Therefore, the signs are aurally at least similar to low degree as the first part of the
earlier right and the contested sign are composed of almost identical letters which will
be pronounced in a very similar order.
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Conceptually, the relevant public will perceive the concept(s) underlying the earlier
right as described above, also bearing in mind that the meaning of the abbreviations
SIS LOG is explained in the earlier right itself. The element ‘LOG’, included in both
signs, will hence be associated by at least part of the public with ‘logistics’ or an IT
related LOG and is therefore considered to be weak in relation to parts of the goods and
services (see above). To that extent, the signs are conceptually similar, but only to a low
degree, because this coincidence lies in a weak element, namely the verbal element
‘LOG’. For the remaining part of the public, the contested sign does not have a
meaning. Since in this case, one of the signs will not be associated with any meaning,
the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 and 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, despite the presence of some weak elements in the mark as
stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
Article 8(1) (b) EUTMR states that, upon opposition, a EUTM application shall not be
registered if because of its identity with, or similarity to, the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks there exists
a likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services 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).
The interdependence principle is crucial to the assessment of likelihood of confusion,
particularly as, in the present case, the contested goods and services are identical to
the ones covered by the earlier mark.
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
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assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.).
The goods and services are identical. They target the public at large and/or business
customers and the degree of attention varies from average to high. The signs are
visually, aurally and also at least conceptually similar to a low degree for part of the
public, because the coincidence partly lies in a weak element.
Finally, it should be recalled that the fact that the element ‘LOG’ has a low degree of
distinctiveness does not prevent it from contributing to making the signs confusingly
similar. In fact, the weak distinctive character of an element of a mark does not
necessarily imply that that element will not be taken into account by the relevant
public, if it has a significant impact to its dimension or position (10/07/2012, T 135/11,
Cloralex, EU:T:2012:356, § 35 and 36 confirmed by 30/01/2014, C 422/12 P,
Cloralex, EU:C:2014:57). This is the case here, as the identical element LOG will be
clearly recognised and understood in both signs and will therefore not be overlooked.
The earlier signs additional verbal elements SISTEMAS LOGISTICOS and also the
different order/number of the letters, namely ‘SIS’ and ‘I-SI’ of the contested sign
cannot overcome these similarities. Even if the letter ‘i’ was to be perceived maybe
as a reference to internet, interactive or intelligent, this would not alter the fact that it
is still perceived also as such, namely the letter ‘i’. Moreover, it has to be borne in
mind that consumers will be confronted with the signs in the context of identical
goods and services.
Account is taken of the fact that average consumers rarely have the chance compare
two trade marks side by side, but must instead rely on the imperfect recollection of
the signs that they have kept in their mind, (22/06/1999, C 342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26). 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).
Therefore, the visual, aural and conceptual similarity to a low degree between the
signs are, together with the identity contested goods and services, on the basis of the
whole and especially taking into account the interdependence principle, sufficient to
consider that the signs are likely to create confusion in the mind of the public, since
likelihood of confusion not only covers situations where the consumer directly
confuses the trade marks themselves, but also where the consumer makes a
connection between the conflicting signs and assumes that the goods or services
covered are from the same or economically linked undertakings. In view of the
coinciding element, the two signs could be perceived as two different product or
service lines coming from the same or economically linked undertakings.
It is common practice, on the relevant market, for companies to make variations of
their trade marks, for example by altering the typeface or letters, or adding verbal or
figurative elements to them, in order to denote new product lines, or to endow their
trade mark with a new image. Moreover, consumers are well accustomed to word
marks with small variations. Therefore, when encountering the conflicting signs, the
Decision on Opposition No B 2 617 796 page: 7 of 8
relevant public is likely to mentally register the fact that they both contain the same
letters ‘S’ and ‘I’ and the same word element ‘LOG’, and perceive the contested sign
as a variation of the earlier mark. Consequently, the public may attribute the same (or
economically linked) commercial origin to the goods and services that are identical or
highly similar, even where the public’s degree of attention is enhanced.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 3 049 812. It follows that the contested trade mark must
be rejected for all the contested goods and services. It may proceed for the
remaining goods and services.
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
Plamen IVANOV Karin KLÜPFEL Ana
MUÑIZ RODRÍGUEZ
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
Decision on Opposition No B 2 617 796 page: 8 of 8
fixation of costs and shall be deemed to be filed only when the review fee of
EUR 100 (Annex I A(33) EUTMR) has been paid.