OPPOSITION No B 2 792 672

M-Files Oy, Hatanpään Valtatie 26, 33100 Tampere, Finlandia (opponent), represented by Berggren Oy, Tampere, Visiokatu 1, 33720 Tampere, Finland (professional representative)

a g a i n s t

Rede X Red Ltd, Liberty House, 222 Regent Street, London W1B 5TR, United Kingdom, Oleksandr Kovalchuk, Urbanização dos Salgados, Edificio Nathema, lt. 22,  2º-L, 8200-424 Albufeira, Portugal, Andrii Golovashchenko, Condominio Encosta S.José, bl F, ap. Z, Vale Parra, 8200-427 Albufeira, Portugal, Evgenii Antipov, Urbanização dos Salgados, AP7, aprt. 2º-I, 8200-424 Albufeira, Portugal, Yurii Vasylenko, Dnepropetrovskaya obl., Pavlograd, Leningradskaya 43/44, Kiev  51400, Ukraine (applicants).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 792 672 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 664 378 for the figurative mark . The opposition is based on international trade mark registration designating the European Union No 1 111 837 for the word mark ‘M-FILES’ and Finnish trade mark registration No 253 382 for the word mark ‘M-FILES’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION – International trade mark registration designating the European Union No 1 111 837

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is 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 will 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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the evidence submitted by the opponent consists of extracts from the EUIPO’s ‘eSearch’ database.

This evidence is not sufficient to substantiate the opponent’s earlier international trade mark registration designating the European Union No 1 111 837.

International registrations are processed by WIPO, which is the administration that registers these trade marks. Therefore, WIPO is the sole body responsible for keeping official records of all international registration regardless of designation, be it the European Union or another territory.

Therefore, a certificate of registration or other equivalent evidence, such as an extract from the ROMARIN database, emanating from WIPO is needed to substantiate an IR designating the EU. The Opposition Division would also accept an extract from the ‘TMview’ database for the same purpose, as long as it contains all the necessary information, and as long as this evidence was provided by the opponent (see EUIPO’s Guidelines). Rule 19(2)(a) EUTMIR specifically allows an exception to the rule with regard only to EUTMs; this exception is not deemed to extend to any other type of trade mark, and therefore not to IRs designating the EU.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The opposition will proceed the examination of the other earlier mark on which the opposition is also based, namely Finnish trade mark registration No 253 382, which has been duly substantiated.

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, inter alia, the following:

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; consultation services relating to computers; technical support services relating to computer networks; technical support services relating to computer programs for document management, data management, content management, information management and project management and workgroup systems.

The contested services are the following:

Class 42: Electronic data storage; electronic storage services for archiving electronic data; temporary electronic storage of information and data; compression of data for electronic storage; computer services concerning electronic data storage; electronic storage services for archiving databases, images and other electronic data; electronic storage services for archiving databases; electronic data storage and data back-up services; providing computer facilities for the electronic storage of digital data; IT services; computer hardware development; IT security, protection and restoration; administration of user rights in computer networks; data duplication and conversion services, data coding services; design and development of data storage systems; design and development of wireless data transmission apparatus, instruments and equipment; design and development of wireless data transmission apparatus.

Some of the contested services are identical to the services on which the opposition is based, e.g. the contested design and development of data storage systems is included in the broad category of the opponent’s design and development of computer software. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

2. Relevant public — degree of attention

In the present case, some of the services assumed to be identical are directed at public at large such as data storage, whereas some of them such as design and development of data storage systems target professionals in the field of computing. Therefore, with respect to these services, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

The public’s degree of attentiveness, irrespective of whether the general public or the professional public is concerned, may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services. Some of those services are regularly purchased and some are only acquired on an infrequent basis for a very specific purpose.

3. The signs

M-FILES
Earlier trade mark	Contested sign

The relevant territory is Finland.

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). 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The contested sign is a figurative sign composed of an orange figurative device followed by the letters ‘UFiles’ written in a fairly standard white typeface, all these elements being placed against a grey rectangular background. The figurative device is dominant in comparison to the verbal element due to its eye-catching orange colour in contrast with the grey background and white lettering. Further, the figurative element occupies roughly half of the contested mark’s space and has a conspicuous position at the beginning of the sign. Though in principle, figurative elements of signs may have a lesser impact in the overall impressions than verbal elements given that the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components, this does not hold true in all cases. Firstly, the figurative element is the most eye-catching thus dominant element and, moreover, it is fanciful. In that regard, it is recalled that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). Secondly, in this case, the account should be taken of the fact that the verbal component of the sign includes the element ‘UFiles’ and even though the Court has held that, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, consumers will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Thus, even though the element ‘UFiles’ as a whole has no meaning, the relevant public will dissect the term ‘Files’ and perceive this English word being one of the core terms and ubiquitous in the area of IT, i.e. as “a folder, box, etc, used to keep documents or other items in order” and “(computing) a named collection of information, in the form of text, programs, graphics, etc, held on a permanent storage device such as a magnetic disk” (see Collins English Dictionary). To this extent, the Opposition Division points out that a basic understanding of English on the part of the public in Finland must be regarded as a well–known fact (see 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 18, 23). Bearing in mind that the relevant services fall within the IT field and that the relevant public for this category of services in the present case consists of both average and professional public with understanding of English, it is considered that the abovementioned element is not particularly distinctive for any of the relevant services since it refers directly to the purpose of the services concerned, namely creation of files for different purposes. Thus, the word ‘Files’ in the contested sign in relation to the services at hand has a very low distinctive character, if any. The same holds true insofar as the element ‘FILES’ in the earlier mark is concerned.

Consequently, the relevant public will not pay as much attention to the common, not particularly distinctive element, as to the other more distinctive elements of the marks, i.e. the fanciful figurative device occupying the dominant position in the contested sign followed by the letter ‘U’ and the first letter ‘M’ in the earlier mark. For the reasons set forth above, contrary to the opponent’s arguments, the Opposition Division considers the impact of the element ‘Files’ as limited when assessing the likelihood of confusion between the marks at issue.

Visually, the signs share the same amount of letters coinciding in the term ‘Files’ with a limited distinctiveness, if any, whereas they differ in the first letters ‘M’, being the most distinctive element of the earlier mark given the lack of association with the relevant services, followed by a hyphen, vs ‘U’ of the contested sign, also distinctive for the same reasons, and the figurative device of the latter constituting both the dominant and distinctive element for the reasons set forth above. Regarding the typeface in which the verbal elements of the contested sign are written, their stylisation is fairly standard and will not lead the consumer’s attention away from the elements they seem to embellish.

Consequently, the marks are considered visually similar to a low degree, if any.

Aurally, the pronunciation of the signs coincides in the sound of the weak element ‘Files’, present identically in both signs. The pronunciation differs in the sound of the first letters ‛M’ vs ‘U’, respectively, as the hyphen in the earlier mark has no bearing on the sound.

Consequently, the marks are considered aurally similar to a low degree, if any.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding word ‘Files’ will evoke a concept, thus taking into account the distinctive issues, bearing in mind the differentiating concept of the single letters ‘M’/’U’, the signs are conceptually similar at most to a low 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 services in question from the perspective of the public in the relevant territory. Even considering what was stated in section c) of this decision, the distinctiveness of the earlier mark as a whole is normal.

5. Global assessment, other arguments and conclusion

In the present case, the Opposition Division is of the opinion that the low visual, phonetic and conceptual similarity, if any, between the signs is not enough to lead, in any case, to a likelihood of confusion, even assuming the identity of the services at stake.

Although both signs coincide in the sequence of letters ‘Files’, this term as such is at least weak in relation to the services concerned, as referred to above. Moreover, the marks still contain significant visual, aural and conceptual differences owing to the different first letters in the marks and the additional graphic representation of the contested sign rendering the figurative device a dominant element of the latter. Thus, the common element ‘FILES’ is considered by the Opposition Division as subsidiary. Consequently, even though the services are assumed identical, there is no likelihood of confusion (including a likelihood of association) on the part of the relevant public.

Considering all of the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.

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 signs 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicants in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicants did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Vít MAHELKA

Klaudia MISZTAL

Vanessa PAGE

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.