OPPOSITION No B 2 715 228

Ikarus Security Software GmbH, Blechturmgasse 11, 1050 Wien, Austria (opponent), represented by Freimüller / Obereder / Pilz Rechtsanwält_Innen GmbH, Alser Str. 21, 1080 Wien, Austria (professional representative)

a g a i n s t

Josefa Forgas Peralta, Nena Casas 83 – 3º 2ª, 08017 Barcelona, Spain (holder), represented by March & Asociados, Passeig de Gràcia 103, 7ª Planta, 08008 Barcelona, Spain (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 715 228 is upheld for all the contested goods and services.

2.        International registration No 1 295 191 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods and service of international registration designating the European Union No 1 295 191 ‘ICARUS ANALYTICS’. The opposition is based on, inter alia, European Union trade mark registration No 959 478 ‘IKARUS’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 959 478 ‘IKARUS’.

1. The goods and services

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

Class 9: Data processing apparatus and computers.

Class 35: Advertising; business consultancy, in particular in connection with virus protection programs; planning and implementing of virus protection strategies.

The contested goods and services are the following:

Class 9: Software for managing, collecting and reporting a wide range of information; software for managing web pages and for collecting and reporting information; software for designing and running web pages and related consulting services; software for tracking Internet activities and monitoring of Web page performance and activities; software for diagnostic analysis of web pages; software for optimizing and managing marketing online; user and instruction manuals in electronic form relating to the aforesaid; computer software; computer applications.

Class 35: Market analysis; market research; conducting of on-line studies on market research; compilation, reporting, analysis and integration of data relating to the use of Web sites and the effectiveness of marketing campaigns; management of computerized databases; advertising; business management; business administration; analysis of economic and statistical information relating to markets.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of services in Class 35, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested software for managing, collecting and reporting a wide range of information; software for managing web pages and for collecting and reporting information; software for designing and running web pages and related consulting services; software for tracking Internet activities and monitoring of Web page performance and activities; software for diagnostic analysis of web pages; software for optimizing and managing marketing online; computer software; computer applications are similar to the opponent’s computers. What we call a computer is actually a ‘system’, that is, a combination of components that work together. Hardware devices are the physical components of that system. Hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software; therefore, the conflicting goods have the same distribution channels and target the professional public (e.g. for use in banking and finance, education, medicine, business and entertainment/recreation) and/or the general public. Moreover, they are complementary. The same reasoning applies to computer applications, which are computer programs/computer software designed for specific uses.

Taking the above into account, the contested user and instruction manuals in electronic form relating to the aforesaid (related to different kinds of software) are closely linked to the opponent’s computers. Although they have different natures, these goods are used and sold together and are complementary to each other. They have the same relevant public and distribution channels. Therefore, they are similar.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested market analysis; market research; conducting of on-line studies on market research; analysis of economic and statistical information relating to markets; compilation, reporting, analysis and integration of data relating to the use of Web sites and the effectiveness of marketing campaigns cover the collection and analysis of information about a particular market to assess the viability of a product or service; therefore, they are included in the broad category of the opponent’s advertising. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Consequently, these services are identical.

The contested business administration is deemed similar to the opponent’s business consultancy. The contested services consist in organising people and resources efficiently to direct activities towards the common goals and objectives of a business. In addition, they can have the same purpose, originate from the same undertakings and target the same end users.

The contested business management is usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

When comparing business management with the opponent’s advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

The contested management of computerized databases is similar to a low degree to the opponent’s business consultancy. Although they have different natures and purposes, they can be provided by the same undertakings and target the same users.

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 and services found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention will, therefore, vary from average (e.g. for ordinary products, such as computer software in Class 9) to high (e.g. for services, such as business management in Class 35, directed at professionals, which may have significant financial consequences).

3. The signs

IKARUS	ICARUS ANALYTICS
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the whole contested mark will be meaningful.

The earlier mark is a word mark made up of the single word ‘IKARUS’. At least a part of the relevant English-speaking public will associate the earlier mark with the misspelled name of the mythological figure Icarus. However, the meaning of this word is not related to the relevant goods and services and therefore is distinctive to an average degree.

The contested sign is a word sign composed of two words, ‘ICARUS’ and ‘ANALYTICS’. The word ‘ICARUS’ will be understood by the relevant public and, as explained above, this word is distinctive to an average degree. The word ‘ANALYTICS’ alludes to data analysis; therefore, it has limited distinctiveness for all the goods in Class 9 and all the services in Class 35, since they all require market research and data analysis.

Visually, the earlier mark is composed of six letters and the contested mark of 15 letters. They coincide in the string of letters ‘I*ARUS’, which form almost the entire earlier mark and making the first word of the contested mark. They differ in the additional word ‘ANALYTICS’ of the contested sign; however, this element has limited distinctiveness for the relevant goods and services. Account is taken of the fact that the coinciding letters appear at the beginning of the contested sign, which is particularly important because 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.

Consequently, the signs are visually similar to an average degree.

Aurally, the words ‘IKARUS’ and ‘ICARUS’ will be pronounced identically by the English-speaking public. However, the signs differ in the pronunciation of the additional word ‘ANALYTICS’.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the public, the signs coincide in the concept of the mythological figure Icarus and for the rest of the public the earlier mark does not have a meaning. The signs differ in the concept of data analysis conveyed by the word ‘ANALYTICS’ in the contested sign, which, however, has limited distinctiveness. Consequently, for the part of the public for which ‘IKARUS’ is a fanciful word, the signs are conceptually not similar and, for the part that perceives ‘IKARUS’ as a variant spelling of ‘Icarus’, the signs are conceptually similar to a high degree.

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 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.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods and services are identical or similar to an average or low degree. The signs are visually and aurally similar to an average degree. Conceptually, for a part of the public, the signs are similar to a high degree and, for a part of the public, not similar. However, the difference between the signs is confined to an element that has limited distinctiveness for all of the relevant goods and services.

Taking into account that the earlier mark enjoys a normal degree of distinctiveness and that even consumers who pay 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), the Opposition Division considers that the similarities between the signs are sufficient to counteract the differences between them and may lead the relevant public to believe that the goods and services covered by both marks come from the same or economically linked undertakings.

In its observations, the holder argues that there are several trade marks with the words ‘ICARUS’ or ‘IKARUS’ in the registry name, that coexist without being confused.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or European Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the holder must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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 European Union trade mark registration No 959 478. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier EUTM No 959 478 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder 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

Ioana MOISESCU

Birgit Holst FILTENBORG

Zuzanna STOJKOWICZ

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.