OPPOSITION No B 2 623 240

Ardistel, S.L., Calle Caravis, 18-20-22, Plataforma Logística Plaza, 50197 Zaragoza, Spain (opponent), represented by ZBM Patents, Pl. Catalunya, 1, 08002 Barcelona, Spain (professional representative)

a g a i n s t

Sensiolabs, 92/98 Bd Victor Hugo, 92110 Clichy, France (holder), represented by Hugotavocats, 4 Place André Malraux, 75001 Paris, France (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 623 240 is partially upheld, namely for the following contested goods and services:

Class 9:	Software (recorded programs), namely performance testing and performance management software.
Class 38:	Telecommunications, information relating to communications; communications via radio or telephone terminals; provision of user access to global computer networks; provision of access to databases; electronic bulletin board services (telecommunication services); rental of access time to global computer networks.
Class 42:	Design and development of performance testing and performance management software; research and development of new products for others; development (design), installation, maintenance, updating or rental of performance testing and performance management software; computer programming for performance testing and performance management software; computer system analysis; computer system design; software as a service (SaaS) for performance testing and performance management software; cloud computing; information technology (IT) consultancy for performance testing and performance management software.

2.        International registration No 1 239 121 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

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REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 239 121. The opposition is based on European Union trade mark registration No 10 908 259. 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 and services on which the opposition is based are the following:

Class 9:	Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, 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 discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 28:	Games and playthings.
Class 35:	Advertising; business management; business administration; office functions.

Following a limitation made by the holder, received on 19/07/2016, the contested goods and services are the following:

Class 9:	Software (recorded programs), namely performance testing and performance management software.
Class 38:	Telecommunications, information relating to communications; communications via radio or telephone terminals; provision of user access to global computer networks; provision of access to databases; electronic bulletin board services (telecommunication services); rental of access time to global computer networks.
Class 42:	Design and development of performance testing and performance management software; research and development of new products for others; technical project studies; development (design), installation, maintenance, updating or rental of performance testing and performance management software; computer programming for performance testing and performance management software; computer system analysis; computer system design; software as a service (SaaS) for performance testing and performance management software; cloud computing; information technology (IT) consultancy for performance testing and performance management software.

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

The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested software (recorded programs), namely performance testing and performance management software is included in the broad category of, or overlaps with, the opponent’s computer software. Therefore, they are identical.

Contested services in Class 38

Telecommunications, also known as ‘telecom’, is a field that covers the exchange of information over (significant) distances by electronic means and refers to all types of content: voice, data, video transmission, etc. ‘Telecommunications’ is a broad term that includes a wide range of information-transmitting technologies such as telephones (wired and wireless); telegraphs; microwave communications; radio and television broadcasting; optical fibre, laser and light beams; satellites; and, of course, the internet. The simplest form of telecommunication takes place between two stations (point to point), but it is common for multiple transmitting and receiving stations to exchange data. Such an arrangement is called a telecommunications network. The internet is the largest example of a telecommunications network. On a smaller scale, examples include local area networks (LANs); corporate and academic wide-area networks (WANs); telephone networks; cellular/mobile networks; police and fire communications systems; taxi dispatch networks; and groups of amateur (ham) radio operators and broadcasting networks. Telecommunications systems are generally run by telecommunications service providers. Under this large umbrella of companies that provide different types of telecommunications services are internet service providers, wireless service providers, radio and television broadcasters, cable companies, satellite television providers and managed service providers.

Therefore, the contested telecommunications, information relating to communications; communications via radio or telephone terminals; provision of user access to global computer networks; provision of access to databases; electronic bulletin board services (telecommunication services); rental of access time to global computer networks are all telecommunication services intended to provide computer communication and internet access or provide access via communications networks of different kinds to online content, websites and/or portals of service providers for individual users and/or companies. These services are provided using devices such as the opponent’s data processing equipment and apparatus for transmission of sound or images. Such services also typically involve the operation of purpose-specific computer software. Moreover, such services typically aim to interconnect the opponent’s computers or computer software. Therefore, even though their natures are different, their purposes, end users and distribution channels are the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26). Furthermore, they are complementary. Therefore, these contested goods are similar to the opponent’s aforementioned goods in Class 9.

Contested services in Class 42

Software as a service (SaaS) is a software distribution model in which a third-party provider hosts applications and makes them available to customers over the internet. SaaS is considered one of the three main categories of cloud computing, alongside infrastructure as a service (IaaS) and platform as a service (PaaS). Among its benefits is that it removes the need for organisations to install and run applications on their own computers or in their own data centres, which eliminates the expense of hardware acquisition, provisioning and maintenance, as well as software licensing, installation and support. Unlike traditional software, which is conventionally sold as a perpetual licence with an up-front cost (and an optional ongoing support fee), SaaS providers generally price applications using a subscription fee, most commonly a monthly or annual fee. Therefore, customers outsource their software or computer program needs and rent those computer software services by subscribing to a SaaS offering and, generally, they pay for this service on a periodic basis (e.g. monthly) using a pay-as-you-go or fixed-rent model.

Considering the above, the contested cloud computing and software as a service (SaaS) for performance testing and performance management software are highly similar to the opponent’s computer software in Class 9. This is because in the computer software market it is becoming frequent for services to be delivered on a pay-as-you-go or fixed-rent basis, as explained above for SaaS. Therefore, although the nature of the goods is different, their purpose is the same. They also have the same producers/providers, distribution channels and end users. Moreover, they can be in competition, namely when a consumer decides to acquire SaaS or cloud computing instead of purchasing the actual software.

The contested computer system analysis and computer system design are closely linked to the opponent’s computers in Class 9. This is because the providers of the contested services will also commonly sell or provide the opponent’s computers. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide, as explained above. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested design and development of performance testing and performance management software; development (design), installation, maintenance, updating of performance testing and performance management software; computer programming for performance testing and performance management software; information technology (IT) consultancy for performance testing and performance management software are commonly provided by the same entities as those involved in the design and development of computer software. Such services target the same consumers and they are offered through the same channels, very frequently in combination with each other. In fact, it is very common in the computer software market for relevant consumers to seek related services (maintenance, updates/upgrades, backups/copies, consultancy in how to use specific software, etc.) via the same distribution channels. Therefore, the foregoing contested services are similar to the opponent’s computer software in Class 9.

The contested research and development of new products for others is a broad category of services that includes the research and development of software. Therefore, these services are similar to the opponent’s computer software in Class 9 because these goods and services are complementary and they may have the same producers/providers and end users.

The contested rental of performance testing and performance management software is similar to a low degree to the opponent’s computer software in Class 9. This is because in the computer software market it is very common for computer software to be rented through licences. Therefore, although the nature of the goods is different, the usual producers/providers of the goods and services and their end users coincide.

The remaining contested services, that is, technical project studies, aim to study projects of a technical nature to objectively ensure their smooth and correct implementation and/or to identify and resolve problems as soon as possible. They are dissimilar to all the opponent’s goods and services in Classes 9, 28 and 35 because the contested services are of a specialised nature and are concerned with research, and the dissemination and application of scientific and technical knowledge. They are likely to be provided by professionals individually or collectively, namely members of professions such as chemists, physicists or engineers, in relation to the theoretical and practical aspects of complex fields of activities. These services typically involve evaluations, estimates, research and reports in scientific and technological fields. Therefore, the services under comparison and all the opponent’s goods and services have different natures, purposes and methods of use and they are not in competition. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels. Even if the holder’s services may require the use of some of the opponent’s goods, the link is too remote to give rise to similarity, as the fact that certain goods are used in the provision of a service does not render them complementary, because usually the relevant public is different, as is the case here.

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and/or specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

	BLACKFIRE
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘BLACK’ and ‘FIRE’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is figurative and is composed of the words ‘BLACK’ and ‘FIRE’ written in upper case letters using a slightly stylised black font. In the centre of the sign, separating the two words, is a figurative device depicting a flame in red and black. The earlier mark also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, it will not be taken into consideration for the purposes of the comparison.

The contested mark is the word mark ‘BLACKFIRE’.

The words ‘BLACK’ and ‘FIRE’ of the earlier mark will be understood by the relevant public as referring to the colour black and the hot, bright flames produced by things that are burning (information extracted from Collins Dictionary on 19/06/2017 at www.collinsdictionary.com). As these elements are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The figurative device of the flame of the earlier mark will be understood by the relevant public as a depiction of a burning fire. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is also distinctive.

Although the contested sign contains the single word ‘BLACKFIRE’, the relevant consumers, when perceiving it, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, they will break it down into the words ‘BLACK’ and ‘FIRE’ with the same meanings as indicated above, which have a normal degree of distinctiveness.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Before continuing with the comparison, it is important to note that 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).

Therefore, the holder’s claim that the dominant element in the earlier mark is the figurative device of a flame is manifestly wrong, as it goes against settled case-law, and must be set aside as unfounded.

Visually, the signs coincide in the words ‘BLACK*FIRE’, present identically in both signs. The signs differ in only the figurative device of the earlier mark, which, as explained above, has less impact than the verbal components.

Therefore, as the contested sign has no other differing elements and contains all the verbal components of the earlier mark, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the figurative element of the earlier mark merely reinforces its verbal element, both signs will be perceived as referring to the same concept of a black fire. Therefore, the signs are conceptually identical.

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.

The contested goods and services are partly identical and partly similar to various degrees. The relevant public is both the general and a specialist public. The distinctiveness of the earlier mark is normal, as indicated in the previous section.

Account is 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).

In spite of the difference introduced by the figurative element of the earlier mark, there is a high likelihood of confusion because, in addition to the overwhelming visual coincidences, the signs are aurally and conceptually identical.

Basically, there are no elements that permit the relevant public to safely differentiate between the signs. Indeed, it is highly conceivable that the relevant consumer, even the specialist consumer with a high degree of attentiveness, will perceive the contested mark as a variation or verbal version of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The holder contends that the opponent’s goods and services are different based on the arguments that they do not have the same customer base and that their business sectors are very different. The Opposition Division notes that the scope of protection of the earlier right is defined by its registration and that the opponent is not required (at this stage) to cover or undertake business in all conceivable variations of the categories of goods or services for which the earlier mark is registered. Therefore, the holder’s contentions in this regard are dismissed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 10 908 259. 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 various degrees to those of the earlier trade mark, even for those services found to be similar to a low degree.

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 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

Michal KRUK

Fabián GARCIA QUINTO

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.