OPPOSITION No B 2 425 596

Combit Software GmbH, Untere Laube 30, 78462 Konstanz, Germany (opponent), represented by Patentanwälte und Rechtsanwalt Weiss, Arat & Partner mbB, Zeppelinstr. 4, 78234 Engen, Germany (professional representative)

a g a i n s t

Rombit N.V., Frankrijklei 115, 2000 Antwerpen, Belgium (applicant), represented by Patrick Theunis, Langbosweg 19, 2550 Kontich, Belgium (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 425 596 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 896 106 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 896 106. The opposition is based on European Union trade mark registration No 6 318 935. 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:        Photographic, cinematographic, optical, measuring, signalling, checking (supervision) 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, calculating machines, data processing equipment and computers; computer components; printers; magnetic and optical data carriers; computer programs; software of all kinds, included in Class 9.

Class 16:        Printed matter; instructional and teaching material (except apparatus); user handbooks, catalogues, instructional guides and operating instructions, in particular for software and computer programs, photographs.

Class 35:        Advertising, business management, business administration, office functions; arranging and conducting of events for commercial, advertising and presentation purposes, in particular in the field of electronic data processing and information technology.

Class 38:        Telecommunications.

Class 41:        Arranging and conducting of training courses, seminars and workshops, in particular in the field of electronic data processing and information technology.

Class 42:        Scientific and technological services and research and design related thereto, in particular in the field of electronic data processing and information technology; industrial analysis and research, in particular in the field of electronic data processing and information technology; design and development of computer hardware and software; design of computer systems; computer software (updating of-);consultancy in the field of computer hardware and software; installation of computer programs; rental of computer software; maintenance of computer software; creating databases and computer programs; computer programming; Computer rental; rental and maintenance of memory space for websites, for others (hosting); rental of webservers; design and maintenance of websites for third parties.

The contested goods and services, after a limitation requested by the applicant on 14/10/2015, are the following:

Class 9:        Cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations.

Class 35:        Business mediation in the purchase by others and in wholesaling and retailing of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications; consultancy, providing of information relating to the aforesaid goods, including provided via or by means of electronic networks, including the internet; retailing via webshops of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications.

Class 42:        Design and development of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, and the term ‘in particular’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Goods in Class 9

The contested cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations is included in the broad category of the opponent’s software of all kinds, included in Class 9. Therefore, they are identical.

Services in Class 35

The contested consultancy, providing of information relating to the aforesaid goods [cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications], including provided via or by means of electronic networks, including the Internet are services that involve providing information and consultancy on the products sold or services provided by a certain enterprise, namely specific computer software. The abovementioned services are business services and are at least similar to the opponent’s business management.

Business management services are usually rendered by specialised companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and information provision and any consultancy activity that may be useful in the management of a business (e.g. with reference to efficient allocation of human and financial resources, product development, cost reduction and productivity growth).

These services have similar purposes and natures, as they relate to running and operating businesses and may involve providing advice and information to enable a company to function successfully in a given target market. In addition, they are likely to be rendered in combination with each other through the same channels and by the same providers to the same end users.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33) or identical goods, that is to say, they must either be exactly the same goods or fall within the natural and usual meaning of the category. In the present case, the remaining contested retailing via webshops of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications relate to goods included in the broader category of the opponent’s software of all kinds, included in Class 9. Although the natures, purposes and methods of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to the contested business mediation in the purchase by others and in wholesaling and retailing of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications, which consists in the mediation of trade business for third parties and is considered a type of commercial trading and consumer information service.

Therefore, the contested business mediation in the purchase by others and in wholesaling and retailing of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications; retailing via webshops of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations and related applications are similar to a low degree to the opponent’s software of all kinds, included in Class 9.

Services in Class 42

The contested design and development of cloud and IOT (Internet of Things) computer software developed on request for professionals and corporations are included in the broad category of the opponent’s design and development of computer software. Therefore, they are identical.

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. The degree of attention is average.

3. The signs

combit
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.

The marks are not meaningful in certain territories, for example in those countries in which English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech- and Slovak-speaking parts of the public.

The earlier mark is the word mark ‘COMBIT’, which is meaningless for the relevant public and, therefore, distinctive.

The contested sign is a figurative mark that includes multiple elements. The verbal element ‘ROMBIT’, in slightly stylised bold black characters, is meaningless and therefore distinctive.

The mark also includes a rhombus, on each side of which are two dots. This component of the mark has no connection with the relevant goods and services either, and it is, therefore, distinctive. However, 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, this element has limited significance in the present comparison.

Finally, the contested sign contains the verbal element ‘connecting digital minds’, depicted under the word ‘ROMBIT’ in slightly stylised, significantly smaller and thinner, grey upper case letters. Due to its small size and position – and its depiction in grey, which makes it difficult to decipher – this component will not be noticed at first sight and, therefore, is very likely to be disregarded by the relevant public. Consequently, this expression is considered a negligible element and will not be taken into consideration for the purposes of the comparison of the signs.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘*OMBIT’ and differ in the first letter of the earlier mark, ‘C’, and of the element ‘ROMBIT’ of the contested sign, ‘R’.

Even though consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as the public reads from left to right, this is not a fixed rule, and in the present case consumers will not overlook the commonality in the remaining five letters of the signs.

The marks also differ in the figurative element of the contested sign, which has limited significance due to its graphic nature, and in its negligible element, which will not be taken into account for the reasons set out above.

In view of the above and of the fact that the marks have five out of six letters of their word elements in common, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘*OMBIT’. The pronunciation differs in the sound of the letters ‘C’ of the earlier mark and ‘R’ of the verbal element ‘ROMBIT’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the verbal elements of the signs has a meaning for the public in the relevant territory. However, the figurative element of the contested sign will be perceived as such. To this extent, and bearing in mind the secondary relevance of said component of the mark, the signs are conceptually not similar.

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

The contested goods and services in Classes 9, 35 and 42 are partly identical and partly similar to various degrees to the opponent’s goods and services. These goods and services target both a professional public and the public at large. The degree of attention is considered average. Furthermore, the earlier mark enjoys an average degree of distinctiveness in connection with the relevant goods and services.

The signs are visually similar to an average degree and aurally similar to a high degree, because they have in common the string of letters ‘*OMBIT’, which constitutes five out of six letters of the earlier mark and of the verbal element of the contested sign, which are both meaningless for the relevant public. The only conceptual difference between the marks lies on the graphic, hence less relevant, element of the contested mark.

Admittedly, the marks differ in their first letters, and consumers generally tend to focus their attention on the beginnings of marks; however, although this must be taken into account when assessing the likelihood of confusion, it is only one of the many factors involved in that assessment. The other differences between the signs are confined to aspects that either may pass unnoticed both visually and aurally (i.e. the negligible element of the contested sign) or have a limited impact on the overall impression of the sign concerned (i.e. the graphic element of the contested sign).

Account must be 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).

In its observations of 15/03/2017, the applicant argued that the relevant marks refer to different portions of the market, distribution channels and consumers. The Opposition Division observes that likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by Case-law, it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). As a consequence, the present assessment is based only on the relevant Law (mainly the EUTMR) and the General Court and Court of Justice Case-law, while the (in any case not proven) facts put forward by the applicant cannot be taken into consideration. Hence, this claim must be set aside too. Under these circumstances, the applicants’ arguments are dismissed.

Considering all the above, there is a likelihood of confusion on the part of the Czech- and Slovak-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 318 935. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.