OPPOSITION No B 2 753 336

Miguel Fernández, Estrada de Polima, 673, Parque Industrial Meramar I – Armazém A

P-2785 534 S. Domingos de Rana, Portugal (opponent), represented by Gonçalo Vareiro, Rua Braamcamp, nº 6, 1º Esq., 1250-050 Lisboa, Lisboa (professional representative)

a g a i n s t

Apper Group AB, Nellickevägen 22 7TR, 412 63 Göteborg, Sweden (applicant), represented by Advokatfirman Lindahl KB, P.O. Box 11911, 404 39 Göteborg, Sweden (professional representative).

On 08/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 753 336 is partially upheld, namely for the following contested goods:

Class 9:        Computer software programs; Software; Software drivers; Computer software programs for database management; Computer software programs in the form of applications.

2.        European Union trade mark application No 15 357 825 is rejected for all the above goods. It may proceed for the remaining 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 15 357 825. The opposition is based on European Union trade mark registration No 13 807 797. 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 16:        Printed matter; Printed publications; Bookbinding material; Photographs; Stationery; Instructional and teaching material (except apparatus).

Class 35:        Product demonstrations and product display services; Assistance in product commercialization, within the framework of a franchise contract; Advertising; Import and export services; Market research; Sales promotion for others; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Trade promotional services; Business promotion services provided by telephone; Business promotion services provided by audio/visual means; Sales promotion.

Class 41:        Publishing services (including electronic publishing services); Publishing services; Electronic text publishing services; Publishing services for books and magazines; Audio and video production, and photography; Film editing; Film editing (Photographic -); Editing of cine-films; Videotape editing.

The contested goods and services are the following:

Class 9:        Computer software programs; Software; Software drivers; Computer software programs for database management; Computer software programs in the form of applications.

Class 42:        IT services; IT consultancy; IT advisory; Information services; Consultancy services relating to computer programming and computer software; Computer software consultancy; Computer programming; Installation of computer software; Hosting services and software as a service and rental of software; Design and development of software; Server hosting; Configuration of computer software; Software customization services; Management of computer systems.

Class 45:        Licensing of computer software.

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.

The only argument that the opponent makes in its observations regarding the alleged similarity between its goods and services and those of the applicant is that the applicant’s goods and services can be ‘considered an extension of the products commercialized by the opponent’. Regarding this point, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. Any actual or intended use or brand extension not stipulated in the list of goods and/or 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/or 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).

Contested goods in Class 9

The contested goods in this class are software and software drivers, the latter being types of software that allow an operating system to operate a piece of hardware. These goods are similar to the opponent’s publishing services (including electronic publishing services), as they have the same purpose and can have the same producers and distribution channels.

Contested services in Class 42

The contested services in this class are all IT related (consultancy in this field or programming). These services are offered by computer engineers or similar specialists and distributed through very specific channels. From the above description of the opponent’s goods and services, it is obvious that the natures and purposes of the conflicting goods and services are not the same; the goods and services are provided by different undertakings through different channels of trade and they are neither complementary to nor in competition with each other. The fact that software programs (and consequently the services of computer engineers) are used/requested for the rapid operation of many goods and to offer many services does not mean that they are similar.

Therefore, the services are dissimilar.

Contested services in Class 45

The contested services in this class are legal services offered by individual lawyers or law firms. Therefore, the natures and purposes of the conflicting goods and services are completely different, and they are provided by different undertakings through different channels of trade. Furthermore, the goods and services are neither complementary to nor in competition with each other. Therefore, the services are dissimilar.

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 at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the exact nature of the goods, 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 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 ‘aupper’ nor ‘apper’, as such, mean anything for the relevant public in Portugal, Spain, Italy, France or Romania and, therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on these territories.

Neither mark has any element that can be considered more dominant than other elements and, because they have no meaning in relation to the goods and services, the verbal elements of the marks are distinctive.

Visually, the signs are similar inasmuch as they coincide in five letters, ‘a*pper’. They differ in one letter (the letter ‘u’ that follows the letter ‘a’ in the earlier trade mark but has no counterpart in the contested sign), the figurative element placed before the verbal element in the earlier mark, the large brackets in the contested sign and the fact that, whereas the contested mark is not depicted in colour, the earlier mark is depicted in yellow, green and blue. These differences, however, are relatively minor, taking into account that the stylisations of the words are very similar and the figurative element of the earlier mark is not very striking; therefore, the marks are visually similar to an average degree.

Aurally, the marks differ only in the sound of the additional letter of the earlier sign; therefore, they are aurally highly similar.

Conceptually, neither the verbal elements nor the figurative elements have any meaning for the public in the relevant territories. 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.

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

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 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, § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The signs have an average degree of visual similarity and are aurally highly similar. However, they lack concepts that could help consumers differentiate between them. Consequently, for similar goods, the relevant public may think that they originate from the same undertakings or companies with economic ties, even consumers who pay a high degree of attention, as they also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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

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 because the marks, though similar, are 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

Angela DI BLASIO

María Belén IBARRA DE DIEGO

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.