OPPOSITION No B 2 715 806

We Do Consulting-Sistemas De Informacao, S.A., Lugar do Espido, Via Norte, 4470 Maia, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Wedowell (Tianjin) International Trade co. LTD, 1-4-308, Huijin Square no. 35 West Five Road, Tianjin Airport Economic Zone Tianjin Pilote Free Trade Zone, People’s Republic of China (applicant), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan 32, 1310 La Hulpe – Terhulpen, Belgium (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 715 806 is partially upheld, namely for the following contested goods:

Class 9:         Computer operating programs, recorded; Computer software, recorded; Video game cartridges; Electronic publications, downloadable; Computer game software; Computer software applications, downloadable; Speaking tubes; Radiological apparatus for industrial purposes; Animated cartoons.

2.        European Union trade mark application No 15 163 488 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 European Union trade mark application No 15 163 488. The opposition is based on the Portuguese trade mark registration No 348 473. The opponent invoked Article 8(1)(b), 8(5) 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: Computer programs, computers, computer and telecommunications apparatus.

Class 35: Advertising services.

Class 38: Telecommunications services and computer telecommunications.

Class 42: Services relating to the study and activity of engineers, research and development in the field of telecommunications and computers; design and development of software, computer programs for telecommunications.

The contested goods are the following:

Class 7: Agricultural implements other than hand-operated; Disintegrators; Woodworking machines; Printing machines; Machines for the textile industry; Shredders [machines] for industrial use; Tobacco processing machines; Hemming machines; Bicycle assembling machines; Wrapping machines; Food processors, electric; Washing machines [laundry]; Centrifugal mills; Machines for processing plastics; Electromechanical machines for chemical industry; Drilling machines; Rolling mills; Drilling rigs, floating or non-floating; Elevating apparatus; Pneumatic hammers; Foundry machines; Fittings for engine boilers; Stands for machines; Hand-held tools, other than hand-operated; Painting machines; Dynamo belts; Axles for machines; Welding machines, electric; Filtering machines; Electroplating machines; Leather tanning machines; internal combustion motors [other than for land vehicles]; Apparatus for aerating water; valves [parts of machines]; Rammers [machines].

Class 8: Abrading instruments [hand instruments]; Bush hammers; Garden tools, hand-operated; Instruments and tools for skinning animals; Harpoons for fishing; Beard clippers; Spanners [hand tools]; Hand tools, hand-operated; Lifting jacks, hand-operated; Tweezers; Shears; Swords; Ladles [hand tools].

Class 9: Computer operating programs, recorded; Computer software, recorded; Video game cartridges; Electronic publications, downloadable; Computer game software; Computer software applications, downloadable; Measures; Signal bells; Speaking tubes; Eyepieces; Cables, electric; Regulating apparatus, electric; Fire extinguishers; Radiological apparatus for industrial purposes; Asbestos clothing for protection against fire; Battery jars; Animated cartoons; Electrified fences; Counters; eyeglasses.

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 goods in Class 7

The contested agricultural implements other than hand-operated; disintegrators; woodworking machines; printing machines; machines for the textile industry; shredders [machines] for industrial use; tobacco processing machines; hemming machines; bicycle assembling machines; wrapping machines; food processors, electric; washing machines [laundry]; centrifugal mills; machines for processing plastics; electromechanical machines for chemical industry; drilling machines; rolling mills; drilling rigs, floating or non-floating; elevating apparatus; pneumatic hammers; foundry machines; fittings for engine boilers; stands for machines; hand-held tools, other than hand-operated; painting machines; dynamo belts; axles for machines; welding machines, electric; filtering machines; electroplating machines; leather tanning machines; internal combustion motors [other than for land vehicles]; apparatus for aerating water; valves [parts of machines]; rammers [machines] are, essentially, power-driven tools for the treatment of materials that can be used in industry, in construction, agriculture, chemistry and around the house for purposes of drilling, cutting, shaping, and more. The opponent’s goods in class 9 are related to computer, software and telecommunication. Although some of the contested goods and the opponent’s goods in class 9 can be powered by electricity, this applies to such a wide range of different goods that it is not a substantial factor and does not justify a finding that the nature of the goods at issue is the same. Furthermore, the goods have different specific purposes and methods of use. They are usually produced by different undertakings and offered through different distribution channels. They are not complementary or in competition. Therefore, they are dissimilar.

The contested goods in class 7 are dissimilar to the opponent’s services in class 35, 38 and 42. The goods and services under comparison have a completely different nature and intended purposes. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers and distribution channels. Therefore, they are dissimilar.

Contested goods in Class 8

The contested abrading instruments [hand instruments]; bush hammers; garden tools, hand-operated; instruments and tools for skinning animals; harpoons for fishing; beard clippers; spanners [hand tools]; hand tools, hand-operated; lifting jacks, hand-operated; tweezers; shears; swords; ladles [hand tools] are generally tools and implements powered by human effort and not motor-driven. They are dissimilar to the opponent’s goods in class 9 as they have different natures, purposes and methods of use. They do not have the same suppliers or producers and the same distribution channels. They are not complementary to, or in competition with, each other.

The contested goods in class 8 are dissimilar to the opponent’s services in class 35, 38 and 42. The goods and services under comparison have a completely different nature and intended purposes. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers and distribution channels.

Contested goods in Class 9

The contested computer operating programs, recorded; computer software, recorded; computer software applications, downloadable are all software. They are identical to the opponent’s computer programs being ‘computer program’ a synonymous of ‘computer software’.

The contested computer game software is included in the broad category of the opponent’s computer programs. Therefore, they are identical.

The contested video game cartridges, are removable enclosures containing read-only memory designed to be connected to a consumer electronics device such as a home computer, video game console. They are similar to a high degree to the opponent’s computers as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested electronic publications, downloadable are similar to the opponent’s computer programs as they can coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested speaking tubes are devices based on two cones connected by an air pipe through which speech can be transmitted over an extended distance, commonly used in the past in intra-ship communications. It is, therefore, is included in the broad category of the opponent’s telecommunication apparatus. Therefore, they are identical.

The contested animated cartoons are similar to low degree to the opponent’s computer programming as they can coincide in end user and distribution channels. Furthermore they are complementary.

The contested radiological apparatus for industrial purposes is similar to a low degree to the opponent’s computers as they can coincide in producer, relevant public and distribution channels. 

The contested measures; signal bells; regulating apparatus, electric; fire extinguishers; asbestos clothing for protection against fire; electrified fences; counters are all measuring, monitoring, signalling and safety apparatus, devices and equipment. They are dissimilar to the opponent’s goods in class 9 as they have different natures, purposes and methods of use. They do not usually have the same suppliers or producers and the same distribution channels. The contested goods are also dissimilar to the opponent’s services in class 35, 38 and 42. The goods and services under comparison have a completely different nature and intended purposes. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers and distribution channels.

The contested cables, electric; battery jars are deemed dissimilar to the opponent’s computer programs, computers, computer and telecommunications apparatus. The mere fact that the opponent’s goods are aimed at the energy field is not enough to deem them similar to the contested goods. The Opposition Division finds that said contested goods are sufficiently removed from the opponent’s goods as regards their producers or providers, intended purpose and method of use. Therefore, consumers will not be led to believe that they are manufactured or rendered by the same company. Thus, they are dissimilar. The contested goods are also dissimilar to the opponent’s services in class 35, 38 and 42. The goods and services under comparison have a completely different nature and intended purposes. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers and distribution channels.

The contested eyepieces and eyeglasses are dissimilar to the opponent’s goods in class 9 as they have different natures, purposes and methods of use. They do not have the same suppliers or producers and the same distribution channels. They are not complementary to, or in competition with, each other. The contested goods are also dissimilar to the opponent’s services in class 35, 38 and 42. The goods and services under comparison have a completely different nature and intended purposes. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers and distribution channels.

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 relevant goods are directed at the public at large. The degree of attention will vary from average to high, depending on the frequency of purchase and cost of the relevant goods.

3. The signs

WE DO
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 word mark composed of two words, ‘WE DO’. Being a word mark it has no element that could be considered clearly more dominant (visually eye-catching) than other elements. Since the verbal elements ‘WE DO’ are basic English words they are likely to be understood by a relevant part of the Portuguese-speaking public as the English first plural person ‘we’ and the verb ‘do’. As a whole, the expression ‘WE DO’ will be understood literally as a positive statement ‘WE DO’. The words ‘WE DO’ are distinctive being not descriptive neither allusive with reference to the relevant goods and services.

The contested sign is a figurative mark consisting of the word ‘WEDOWELL’, written in slightly stylized upper case letters, a black dot and four stylised Asian language characters.

With regard to the word ‘WEDOWELL’, it should be noted that the relevant public may regard one-word signs as being composed of different elements, in particular where one part has a clear and evident meaning. In our case, a relevant part of the Portuguese-speaking public will recognize in the word ‘WEDOWELL’ the English words ‘WE DO WELL’, namely the first plural person ‘we’, the verb ‘do’ and the adverb ‘well’, as they are basic English words that a relevant part of the Portuguese-speaking public is likely to understand.

The three words ‘WE DO WELL’ will be understood as a whole by most of the public, with merely a literal understanding of the English language, as an expression that literally means ‘WE DO WELL’. The words ‘WE DO WELL’ are distinctive, being not descriptive neither allusive with reference to the relevant goods. The element ‘WELL’ is an adverb that depends on the statement ‘WE DO’, so it can be considered less relevant than the words ‘WE DO’. The Asian characters are not understood by the relevant public, so they will be perceived as fanciful characters evoking Asia and, therefore, as merely decorative elements. Between the word ‘WEDOWELL’ and the Asian characters there is a black dot, that being a simple punctuation or separation symbol is considered less relevant. Moreover, due to its very small size, the black dot is overshadowed by the word element ‘WEDOWELL’ and the Asian characters of the contested sign, that are considered the dominant elements.

The Opposition Division finds it appropriate to examine the opposition in relation to that relevant part of the public that understands the elements ‘WE DO’ and ‘WEDOWELL’.

Visually, the signs coincide in the letters ‘WEDO’, which constitute the entire earlier mark ‘WE DO’, and are fully included at the beginning of the contested sign. The marks differ in the letters ‘WELL’, the four Asian characters, the black dot and the slight graphic stylisation of the contested sign which have no counterparts in the earlier mark.

As consumers tend to focus on the initial parts of signs, they will perceive the identity between the first four letters of the signs ‘WEDO’ and will pay much less attention to the different letters ‘WELL’, which appear towards the end of the contested sign. The relevance of the first part of the signs to consumers is justified by the fact that 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.

The Asian characters are merely decorative, so they have a very limited impact on consumers. Also the black dot, being a simple punctuation or separation symbol and having a very little size, is considered less relevant. Moreover, the graphic stylisation of the word element of the contested sign is minimal.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WEDO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛WELL’ of the contested mark, which have no counterparts in the earlier sign. Account must be taken that the identical pronunciation is placed at the beginning of the sign.    

Therefore, the signs are similar to an average degree.

Conceptually, and bearing in mind the above considerations on the concepts with which the signs will be associated, the marks have a strong link in as far as they share the expression ‘WE DO’. Taking into account what has been said above, the term “well” merely qualifies the statement “we do” in a positive way and, therefore, the conceptual gap between “we do“ and “we do well” is not very relevant for many Portuguese consumers.

Therefore, the signs are considered to be conceptually similar to an average degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods have been found partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and services. The degree of attention paid by the relevant public may vary from average to high. The signs are visually, aurally and conceptually similar to an average degree.

The earlier sign ‘WE DO’, although made of two words, is entirely contained within the contested sign. In addition, the coinciding letters ‘WEDO’ are placed at the beginning of that mark, where consumers usually pay more attention. Consequently, the identical words at the beginning of the marks at issue has to be taken into account when assessing the likelihood of confusion between the marks.

As explained in detail in section c) above, the differentiating element ‘WELL’ is an adverb depending on the statement ‘WE DO’, so it is subordinated to it. Moreover, it will play a lesser role as it appears towards the end of the contested sign. Also the Asian characters and the black dot of the contested sign are less relevant in the evaluation of the likelihood of confusion, given their decorative and punctuation functions (Asian characters and black dot, respectively).

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.

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).

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between the signs arising from the coincidence in the letters ‘WEDO’ which, albeit split in two words, form the entire earlier mark. Therefore, the relevant public, also that part displaying a high degree of attention, when encountering the signs in relation to identical or similar goods (including the goods similar to a low degree), is likely to think that they come from the same undertaking or, as the case may be, from 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 Portuguese trade mark registration No 348 473.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade 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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 20/06/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/10/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

María Belén IBARRA DE DIEGO

Angela DI BLASIO

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.