OPPOSITION No B 2 615 147

iTAC Software AG, Burgweg 19, 56428 Dernbach, Germany (opponent), represented by Ruhmann Peters Altmeyer, Hauser Gasse 19b, 35578 Wetzlar, Germany (professional representative)

a g a i n s t

Proservice S.r.l., Via Marco Polo 3, 35010 Borgoricco (Padova), Italy (applicant), represented by Cantaluppi & Partners S.r.l., Piazzetta Cappellato Pedrocchi 18, 35122 Padova, Italy (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 615 147 is partially upheld, namely for the following contested goods and services:

Class 9:        Data processing systems; electronic control systems; dosimeters; pyrometers; none of the aforementioned goods are related to road safety.

Class 42:        Industrial analysis and research services; installation and maintenance of computer programs; none of the aforementioned goods are related to road safety.

2.        European Union trade mark application No 14 442 751 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 442 751. The opposition is based on European Union trade mark registration No 12 301 099. The opponent invoked Article 8(1)(a) and (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 and services on which the opposition is based are the following:

Class 9:        Compact discs, DVDs and other digital recording media; computer hardware; computer software.

Class 42:        Design and development of computer hardware and software.

After a limitation of the goods and services in Classes 9 and 42, filed by the applicant on 01/02/2016, the contested goods and services are the following:

Class 7:        Foundry machines; foundry feeding machines.

Class 9:        Data processing systems; electronic control systems; measuring apparatus and instruments; weighing apparatus and instruments; dosimeters; pyrometers; none of the aforementioned goods are related to road safety.

Class 42:        Industrial analysis and research services; installation and maintenance of computer programs; chemical analysis; quality control of liquid metal; none of the aforementioned goods are related to road safety.

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.

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 7

The contested foundry machines; foundry feeding machines are machines used in factories that produce metal casting. These specialised goods are clearly dissimilar to any of the opponent’s goods and services in Classes 9 and 42: the contested goods clearly have a different nature, method of use and relevant public from the opponent’s compact discs, DVDs and other digital recording media; computer hardware; computer software in Class 9 and design and development of computer hardware and software in Class 42. In addition, the contested and the opponent’s goods have different producers and distribution channels and are not in competition with each other or complementary.

Contested goods in Class 9

The contested data processing systems; none of the aforementioned goods are related to road safety are devices that compute, in particular programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information, such as computers. Consequently, these goods include, as a broader category, or at least overlap with the opponent’s computer hardware in Class 9. Therefore, these goods are identical.

The contested electronic control systems; none of the aforementioned goods are related to road safety are apparatus and instruments used for managing, commanding, directing or regulating the behaviour of other devices or systems and are therefore complementary to, or at least almost always used in combination with, the opponent’s computer hardware and software in Class 9. In fact, even though it cannot be completely excluded that these goods are analogue, the contested goods are often – if not almost always – digital or digitally operated and work not independently, but in connection with other electronic apparatus, in particular the opponent’s computer hardware and software. In addition, these goods coincide in their nature and may coincide in their distribution channels. Therefore, these goods are similar.

The contested dosimeters; none of the aforementioned goods are related to road safety are instruments for measuring the dose of X-rays or other radiation absorbed by matter or the intensity of a source of radiation; the contested pyrometers; none of the aforementioned goods are related to road safety are instruments for measuring high temperatures. These specialised goods are used for human (radiation) protection and/or measurements in medical and industrial processes, almost always   together with specific dosimeter or pyrometer management software. Such software is usually not an integrated part of the contested instruments, but can be purchased independently from them and serve to give more or different functionalities. Consequently, these contested goods can coincide in purpose and end users with the opponent’s computer software in Class 9. In addition, they are complimentary. Therefore, these goods are similar.

The contested measuring apparatus and instruments; none of the aforementioned goods are related to road safety are devices and instruments that show the extent, amount, quantity or degree of something. These goods are clearly dissimilar to all of the opponent’s goods and services in Classes 9 and 42. They do not coincide in their purpose, method of use or producer/provider, nor are they in competition with each other.

The contested weighing apparatus and instruments; none of the aforementioned goods are related to road safety are apparatus and instruments that measure how heavy an object is. These goods are clearly dissimilar to all of the opponent’s goods and services in Classes 9 and 42. They do not coincide in their purpose, method of use or producer/provider, nor are they in competition with each other.

Contested services in Class 42

The contested industrial analysis and research services; none of the aforementioned goods are related to road safety are connected to the opponent’s design and development of computer hardware and software. These services coincide in the fact that they are both of a technological nature. Furthermore, they may have the same providers and distribution channels and may target the same end users. Consequently, they are considered similar.

The contested installation and maintenance of computer programs; none of the aforementioned goods are related to road safety are similar to the opponent’s design and development of computer hardware and software in Class 9, as these services are complementary and they can coincide in their producer, end users and distribution channels.

The contested chemical analysis; quality control of liquid metal; none of the aforementioned goods are related to road safety are clearly dissimilar to all of the opponent’s goods and services in Classes 9 and 42, as they have different purposes and they differ in their methods of use, producers, distribution channels and end users. In addition, they are not complementary or in competition with each other.

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/or at business customers with specific professional knowledge or expertise (e.g. the industrial analysis and research services target business customers only). The degree of attention varies from average to high (the latter in relation to goods and services that are expensive, are chosen infrequently and imply enhanced purchase involvement; for example, certain industrial analysis and research services target particular business customers).

3. The signs

iTAC.	ITACA
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.

Neither of the marks has any elements that are clearly more distinctive or dominant (visually eye-catching) than other elements, since both are word marks consisting of elements that are meaningless for part of the relevant public (‘iTAC.’ and ‘ITACA’). Consequently, both marks have an average degree of distinctiveness.

Conceptually, neither of the signs is meaningful for the relevant public in certain territories, for example in Germany, Poland and Spain. In the Opposition Division’s view, contrary to the applicant’s argument, the contested mark will not be associated by the relevant average and professional public with a Greek island located in the Ionian Sea. Only a minority of the relevant Spanish-speaking public is familiar with the ancient Greek epic poem the Odyssey (in which the hero Odysseus is king of Ithaca) or with Greek geography and the name of this specific island. As regards the relevant German- and Polish-speaking public, the name of this specific island is ‘Ithaka’ in German and ‘Itaka’ in Polish. Therefore, the Opposition Division considers it highly unlikely that the contested mark will communicate any concept to the vast majority of the relevant German- and Polish-speaking consumers.

As regards the applicant’s argument that the first, lower case, letter ‘i’ in the earlier mark would be associated by the relevant public with internet-enabled goods and services, by analogy with other marks beginning with the letter ‘i-’, the evidence submitted thereof does not persuade the Opposition Division. Even though it cannot be excluded that a minor part of the public could perceive the mark in the way described by the applicant, it is not reasonable to conclude that this will be the perception of a significant part of the public. In addition, where both marks are registered as word marks, the typeface actually used in the official publication is immaterial. Differences in the use of lower or upper case letters are immaterial, even if both lower case and upper case letters are used. Therefore, the earlier mark is registered as ‘ITAC.’.

Furthermore, the applicant’s argument that the opponent uses the earlier mark together with the word ‘software’ is also irrelevant. For the comparison of the signs, an assessment is made on the basis of the signs as registered rather than how they are actually used in the course of trade (09/06/2010, T-138/09, Riojavina, EU:T:2010:226, § 50). Moreover, the earlier mark is registered as a word mark, in which the word as such is protected and not its written form.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-, Polish- and Spanish-speaking parts of the public. Consequently, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of the similarity between the marks.

Furthermore, 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.

Visually and aurally, the four-letter string ‘ITAC’ constitutes the beginning of both signs; the only differences between the marks lie in the dot at the end of the earlier mark and the final letter ‘A’ of the contested sign.

Therefore, the signs are similar to a high degree both visually and aurally.

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

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 (recital 8 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 (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).

Account must also be 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). 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).

As has been concluded above, the contested goods and services are partly identical and partly similar to the opponent’s goods and services, and target the public at large and professionals whose degree of attention ranges from average to high. Furthermore, the earlier mark is considered to enjoy an average degree of distinctiveness and the marks are visually and aurally similar to a high degree, while the conceptual comparison does not influence the assessment of the similarity between the marks for the majority of the relevant public taken into account (as seen above under section c) as regards the conceptual comparison of the signs).

The marks differ only in their final characters (a dot in the earlier mark and the letter ‘A’ in the contested sign).

In the light of all the foregoing considerations, and also taking into account the notion of imperfect recollection, even when the degree of attention of the public is high, the Opposition Division concludes that the minor difference between the signs in question is not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could believe, for instance, that the goods and services designated by the conflicting signs come from the same or related undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-, Polish- and Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 301 099. 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.

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

The rest of the contested goods and 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 goods and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and goods and services are obviously not identical.

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 will decide a different apportionment of costs.

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

The Opposition Division

Gueorgui IVANOV

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.