OPPOSITION No B 2 611 542

Unisono Soluciones de negocio, S.A., Dr. Zamenhof, 22, 28027 Madrid, Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain (professional representative)

a g a i n s t

Huber + Suhner AG, Degersheimerstr. 14, 9100 Herisau, Switzerland (holder), represented by Boehmert & Boehmert Anwaltspartnerschaft MbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 611 542 is partially upheld namely for the following contested goods:

Class 9: Connectors and adapters for the establishment of fiber-optic connections, optical hybrid connectors, connectors with integrated opto-electronic converters

2. European Union trade mark application No 1 234 753 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 234 753. The opposition is based on, inter alia, Spanish trade mark registration No 3 022 304. 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 Spanish trade mark registration No 3 022 304.

1. The goods and services

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

Class 9: Computer programs (recorded), recorded computer programs, computer programs (electronically downloadable software), recorded operating systems programs (for computers); game programs; optical media magnetic data; magnetic cards; central processing units, computers; printed circuits; magnetic discs; optical discs; compact discs; magnetic tapes. 

Class 38: Telecommunications. 

The contested goods are the following:

Class 9: Connectors and adapters for the establishment of electrical and/or fiber-optic connections, optical/electrical hybrid connectors, connectors with integrated opto-electronic converters, as well as cable assemblies with these connectors, cable systems with these connectors and associated elements, namely junction boxes, distribution systems and fastening elements; all aforementioned goods none being capacitor systems that extend the life of batteries, sensors for temperature, speed and pressure, signal and control harnesses for turbine engines, permanent magnet generators, electrical power system regulators and controllers (except connectors for the electrical power supply of regulators and controllers), tubes and ducts for turbine engines, flexible joints for turbine engines, heat exchangers, high energy pulse power supplies, ignition exciters, igniters and leads, pressure switches, limit switches and bellows.

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

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 contested connectors and adapters for the establishment of fiber-optic connections, optical hybrid connectors, connectors with integrated opto-electronic converters are goods that are used with fiber-optic connections. These goods are similar to the opponent’s printed circuits which provide the support for the electronic components in the circuit and provide the means of connecting all of those circuits. The contested goods may be used in circuit board applications in data and telecommunication systems, making it possible for operators to render their services and for users to access them. The consumer targeted may expect the contested goods to come from the same company that provides the opponent’s printed circuits. Furthermore, the goods under comparison have the same distribution channels and same end users. In addition, the contested goods may be used in combination with the opponent’s printed circuits.

The contested connectors and adapters for the establishment of electrical connections, electrical hybrid connectors; cable assemblies with these connectors, cable systems with these connectors and associated elements, namely junction boxes, distribution systems and fastening elements; all aforementioned goods none being capacitor systems that extend the life of batteries, sensors for temperature, speed and pressure, signal and control harnesses for turbine engines, permanent magnet generators, electrical power system regulators and controllers (except connectors for the electrical power supply of regulators and controllers), tubes and ducts for turbine engines, flexible joints for turbine engines, heat exchangers, high energy pulse power supplies, ignition exciters, igniters and leads, pressure switches, limit switches and bellows are all either electrical power sources or adaptors, containers for electrical connections, usually intended to conceal them from sight and deter tampering and systems for providing power to individual consumer premises. On the contrary, the opponent’s goods consists of, among others, computer programs central, processing units and computers in Class 9 and telecommunication services in Class 38. As a consequence, the contested goods cannot be considered similar to any of the opponent’s goods in class 9 or services in Class 38. The fields of activities where the goods and services under comparison are involved are different: the contested goods concern electricity, while the opponent’s goods and services refer to computer science, electronics and telecommunication services. Furthermore, they are also distributed through different trade channels. Finally although the opponent’s goods and services may use the applicant’s contested goods for a smooth running, this is not enough to find a similarity between these goods and services, since the goods and services under comparison are manufactured or provided by different undertakings. Therefore, these goods are considered 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 found to be similar are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

	UNISONO
Earlier trade mark	Contested sign

The relevant territory is Spain

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 contested mark is a word mark ‘UNISONO’. In the case of word marks it is the word as such which is protected and not its written form. Therefore it is irrelevant if the mark is written in small or capital letters. The earlier mark is a figurative mark consisting of a word ‘UNĺSONO’ in lowercase red colour below which words ‘business solutions’ is smaller grey letters appear.

The common element ‘UNĺSONO/UNISONO’ refers to ‘unison – a simultaneous action’ or in the music field ‘a coincidence in pitch of sounds or notes’ in Spanish. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is considered distinctive. 

The element ‘business’ of the earlier mark has no meaning in Spanish. On the other hand, the word ‘solutions’ is very close to the equivalent word ‘soluciones’ in Spanish and will be understood by the relevant public. Bearing in mind the relevant goods at hand, this element is considered to be non-distinctive for these goods and the public will not pay as much attention to this element as to the other, more distinctive, elements of the contested sign.

The contested sign is a word mark composed of one word and has therefore no elements that could be considered more distinctive or dominant than other elements.

The element ‘UNĺSONO’ in the earlier sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the word ‘UNISONO’. The differences between the signs lie in the accent over the letter ‘I’ and the stylisation of the word ‘unisono’ in the earlier mark and in the additional words ‘business solutions’ of the earlier mark.

The difference arising from the additional accent over ‘I’ in the earlier sign must be considered not particularly overwhelming and will not detract the consumer’s attention from the word ‘UNISONO’.

With reference to the stylisation of the earlier mark, its impact in the evaluation of the visual similarity is less important since, 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, since 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

Taking into account the fact that the word ‘UNISONO’ forms the most dominant element of the earlier mark which is also distinctive in relation to the relevant goods at hand, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛UNISONO’, present in both signs. The pronunciation differs in the sound of the word ‛business’ and a non-distinctive word ‘solutions’ of the earlier sign, which have no counterparts in the contested mark. The acute accent above the letter ‘I’ in the earlier mark has no significant aural impact or no impact at all.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average 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 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

In the present case, the contested goods are partially similar and partially dissimilar to the opponent’s goods. The signs have been found to be visually similar to a high degree and aurally and conceptually similar to an average degree as they share the word ‘UNISONO’.

The differences between the signs lie in the stylisation of the earlier mark, in the accent over the letter ‘I’ and in the additional words ‘business’ and a non-distinctive word solutions’ of the earlier mark. Taking into account the prominence and distinctiveness of the word ‘UNISONO’ in the earlier mark and the fact that this word is identical to the contested mark, the Opposition Division finds that there is a likelihood of confusion on part of the public under Article 8(1)(b) CTMR.

Account is also 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). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation 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).

Even if the public pays a higher than average degree of attention during the purchase of the goods in question, the consumers will rely on their imperfect recollection of the marks. The significant aural and visual similarities between the marks are likely to lead consumers to think that the goods that are similar come from the same undertaking or from economically linked undertakings. Accordingly, even if the degree of attention is higher than average, this will not be sufficient to avoid confusion and/or association between the marks under the present circumstances.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 022 304.

It follows that the contested trade mark must be rejected for all the goods found to be similar to those of the earlier mark. The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the earlier Spanish trade mark registration No 3 018 058 for the figurative mark , registered for the services in Class 38: telecommunications. Since these marks cover a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabián GARCIA QUINTO

Janja FELC

Francesca CANGERI SERRANO

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.