OPPOSITION No B 2 600 388

Nissen & Velten Software GmbH, Goethestr. 33, 78333 Stockach, Germany (opponent), represented by Patentanwälte Behrmann Wagner Partnerschaft Mbb, Hegau-Tower Maggistr. 5 (10. OG), 78224 Singen, Germany (professional representative).

a g a i n s t

Eventa S.r.l., Via Bologna 43, 09028 Sestu, Italy (applicant), represented by Valentina Zuddas, Via Sidney Sonnino 99, 09127 Cagliari, Italy (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 600 388 is partially upheld, namely for the following contested services:

Class 42:        IT services.

2.        European Union trade mark application No 14 610 596 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 610 596. The opposition is based on European Union trade mark registration No 8 564 155. 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 and services

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

Class 9:        Business resource-planning support software; software for customer relationship documentation and management (CRM Software);logistics software; investment accounting software; e-commerce software; purchase and procurement management software; financial accounting software; cost calculation software; management information system software; production planning software (PPS software);software for project management; software for the documentation and administration of maintenance contracts (service software);sales management software; mail order logistics software; disposition software; checkout software.

The contested services are the following:

Class 35:        Commercial trading and consumer information services; advertising, marketing and promotional services.

Class 38:        Computer communication and Internet access; electronic news agency services; data communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; electronic network communications; communication by electronic means; telematic communications via computer terminals; communications via multinational telecommunication networks; provision of communications facilities for interchange of electronic data; information and advisory services relating to telecommunication services; telecommunications access services; news agency services for electronic transmission; communication services for the transmission of information; communication services for the transmission of information by electronic means; communications services for the exchange of data in electronic form; telematic communication services; Information transmission services via digital networks; data transmission services over telecommunications networks; data transmission services over telematic networks; digital transmission services; electronic transmission of information (services for the -); telecommunication of information (including web pages); automatic transfer of digital data using telecommunications channels; transfer of data by telecommunications; transmission of data, messages and information; digital transmission of data; digital transmission of data via the Internet; transmission and reception [transmission] of database information via the telecommunication network.

Class 42:        Science and technology services; IT services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

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 services in Class 35

The contested advertising, marketing and promotional services consist mainly of the promotion of goods or services through various media channels (e.g. TV) and associated industries, namely the design and delivery of publicity and marketing. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who 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. The contested commercial trading and consumer information services are usually rendered by specialised companies that help other undertakings in trading, e.g. by arranging transactions or contracts.  It follows from this that the contested services and the opponent’s goods differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings. Even if the opponent’s goods (different types of software) are used daily for a wide range of purposes in a variety of industries including the services for which the applicant seeks protection, this is not enough on its own to lead to similarity since there is no close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

Therefore, they are dissimilar.

Contested services in Class 38

The contested computer communication and Internet access; data communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; electronic network communications; communication by electronic means; telematic communications via computer terminals; communications via multinational telecommunication networks; provision of communications facilities for interchange of electronic data; information and advisory services relating to telecommunication services; telecommunications access services; communication services for the transmission of information; communication services for the transmission of information by electronic means; communications services for the exchange of data in electronic form; telematic communication services; Information transmission services via digital networks; data transmission services over telecommunications networks; data transmission services over telematic networks; digital transmission services; electronic transmission of information (services for the -); telecommunication of information (including web pages); automatic transfer of digital data using telecommunications channels; transfer of data by telecommunications; transmission of data, messages and information; digital transmission of data; digital transmission of data via the Internet; transmission and reception [transmission] of database information via the telecommunication network are all telecommunication services. The opponent’s goods are software used daily for a wide range of purposes in a variety of industries. Although software could be used in the telecommunication industry the opponent’s software is very specific for different areas none having to do with telecommunication services. Therefore, these goods and services have different natures, purposes and methods of use. Furthermore, they are not provided by the same companies, they target different end users and they are provided through different distribution channels. These goods and services are also not in competition nor complementary. As a result these goods are services are dissimilar.

The contested electronic news agency services; news agency services for electronic transmission are services connected with news agencies. As with the other contested services in Class 38 they have different nature, purpose and methods of use from the opponent’s goods. Furthermore, they are not provided by the same companies, they target different end users and they are provided through different distribution channels. These goods and services are also not in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 42

The contested IT services are similar to the opponent’s goods (different types of software) since IT-services include design and development of software. Therefore these goods and services share the same public and provider. They are also complementary.

The contested science and technology services are dissimilar to the opponent’s goods. These goods and services have different natures, purposes and methods of use. Furthermore, they are not provided by the same companies, they target different end users and they are provided through different distribution channels. These goods and services are also not in competition nor complementary.

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 similar are directed at the public at large and business customers with specific professional knowledge or expertise considering that the goods and services at issue are specialised goods and services.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

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 earlier mark is a figurative mark with the verbal elements ‘enventa’’ and ‘ERP’. The letters ‘nv’ and ERP are in blue and the letters ‘e**enta’ in grey, the first letter ‘n’ partially being placed behind the letter ‘v’.  The figurative element is made up of an ellipse shaped line with three round globes, almost like planets in an orbit, surrounding the first three letters of the first verbal element.

The contested sign is a figurative mark with the verbal element ‘EVENTA’ in slightly black stylistics font. Both ‘E’s’ in the mark are not standard ‘E’s’ however given the three lines it will be perceived by the relevant public as such even though they don’t look like standard characters. The figurative element is an orange circle located before the verbal element containing three white lines in different lengths. These lines would also be perceived as an ‘E’.

Even though the words ‘ENVENTA’ and ‘EVENTA’ do not have a meaning in the relevant territory both the contested sign and the first verbal element of the earlier mark could be perceived as alluding to the common English word ‘event’ and/or the Spanish, Italian and Portuguese word ‘evento’ which is a happening or a special occurrence. Notwithstanding this fact the word ‘event’ has no meaning in relation to the relevant goods and services and is therefore distinctive.

Moreover, the second element ‘ERP’ of the earlier mark is a common abbreviation for ‘enterprise resource planning’ which is the integrated management of core business processes, often in real-time and mediated by software and technology (https://en.wikipedia.org/wiki/Enterprise_resource_planning, found online 2017-03-21). Considering the relevant goods and services are technology-related, this element is non-distinctive.

Both marks have no element that could be considered clearly more dominant than other elements all elements being of more or less the same size.

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).

Visually, the signs coincide in the letters ‘E*VENTA’ which is the whole verbal element of the contested sign. However they differ in that the earlier sign also contain the letter ‘N’ between the first and third letter and also the three letter combination ‘ERP’ in the end of the mark. The signs also have different figurative elements and colours.

Furthermore, the three letters ‘ERP’ of the earlier mark has a limited impact when assessing the similarity between the marks, as it is non-distinctive for all the goods and services at issue.

Considering the above, the verbal elements in the marks are highly similar however the figurative elements in both marks distance somewhat the marks visually from each other.

Therefore, the signs are similar to 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 ‛E*VENTA’, present identically in both signs. The pronunciation differs in the additional letter ‘N’ between the first and third letter of the earlier sign but also in the sound of the same sign’s second word, ‘ERP’, which have no counterparts in the contested sign. However, the word ‘ERP’ in the earlier mark is non-distinctive and, therefore, will not attract consumers’ attention.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs might be associated with an ‘event’ they evoke a similar meaning which is slightly attenuated by the concept of the figurative element in the earlier mark, namely the planets orbiting around the verbal elements. As stated above, the earlier mark’s second verbal element has on the other hand a limited impact conceptually when assessing the similarity between the marks, as it is non-distinctive for all the goods and services at issue.

For the public who does not associate both marks with a similar 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.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In its arguments the opponent assumes that the services offered by the applicant are of natures that use special software such as the ones covered by the opponents earlier mark. However this is rebutted by the applicant who claims that they have been trying to explain in previous communication with the opponent what their real activity is and what type of services they actually offer. The applicant has tried to come to an agreement with the opponent to avoid any activity under their brand related to the development, marketing and sales of any software related to ‘enterprise resource planning’. Furthermore the applicant explains that they offer a search engine (database) service that show different events in proximity of whoever is making the search. They also provide advertising services in the area of entertainment and events directed at planners of these events that could be found in the database. According to the applicant these types of services are different in nature, purpose and use than the opponents software related to a wide range of areas of business management.

In this regard, the Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services. Any actual or intended use not stipulated in the list of goods and services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the arguments of both parties must be set aside.

As has been concluded above, the contested services are partly similar and partly dissimilar and directed at the public at large and business customers with specific professional knowledge or expertise whose level of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually similar to an average degree and aurally highly similar since they merely differ in one letter. As stated above the mark could be perceived by part of the public as having identical concepts however for part of the public who does not see this same concept only the earlier mark has a meaning and therefore, in that case, the signs would not be conceptually similar. Even so, this dissimilarity arises from an element that is non-distinctive and this is not enough to enable the relevant public to distinguish the marks from each other.

Therefore, on an overall assessment, taking into account the fact that the average consumer only occasionally has the opportunity to carry out a direct comparison of the various trade marks but must rely on their imperfect mental image of them, it is reasonable to find that even a more attentive public is likely to confuse the marks or believe that the similar services in question come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Adriana VAN ROODEN

Benjamin Erik WINSNER

Begoña URIARTE VALIENTE

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.