OPPOSITION No B 2 775 354

Fent Innovative Software Solutions, Camino de Vera s/n, Universidad Politécnica de la Innovación, Edificio 9B, Despacho 3, 46022 Valencia, Spain (opponent), represented by Laia Torrents Homs, C/ Provenza 286, 2° 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Stratumn SAS, 14 rue Neuve Popincourt, 75011 Paris, France (applicant), represented by Jones Day, Prinzregentenstr. 11, 80538 München, Germany (professional representative).

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

DECISION:

1.        Opposition No B 2 775 354 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programs, computer software and downloadable applications for mobile devices, telephones and tablets; Computer software and computer programs for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Computer software for time-stamping, recording and storage of data and information using blockchain technology; Computer software for operations over a secure network; Computer programs for user interface design; Computer software for use in automating and managing operating procedures; Secure terminals for electronic transactions; Software for integration of applications and databases; Digital recording and storage media for data and information; Computer programs and software for providing secure remote access to computer and communications networks; Data-processing equipment; Electronic keys; USB flash drives; Downloadable computer security software; Computer programs and software for the conversion of multimedia content and data from and into different protocols.

Class 35: Information relating to the secure recording and storage of information and data using blockchain technology.

Class 38: Telecommunications; Electronic communications via fibre-optic networks or mobile, wireless computer and telecommunications networks; Information about telecommunication; Interactive communication services; Providing of access enabling temporary use of non-downloadable computer software applications; Providing of multi-user access to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to databases on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to electronic transaction, communications and information platforms on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Secure transmission of data and information; Providing of telecommunications connections to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Rental of access time to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Monitoring, processing, broadcasting and reception of signals and information data processed by computers or by telecommunications apparatus and instruments.

Class 42: Engineering evaluations and appraisals in the fields of science and technology; Design, development, maintenance and updating of computer programs, computer software and downloadable applications for mobile devices, telephones and tablets; Design, development, maintenance and updating of computer software for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Design, development, maintenance and updating of computer software for time-stamping, recording and storage of data and information using blockchain technology; Design, development, maintenance and updating of computer software for operations over a secure network; Computer programming for the design of user interfaces; Design, development, maintenance and updating of computer software for the automation and management of operational processes; Design, development, maintenance and updating of computer software for the integration of applications and databases; Design, development, maintenance and updating of computer programs and software for providing secure remote access to computer and communications networks; Design, development, maintenance and updating of downloadable computer security software; Design, development, maintenance and updating of computer programs and software for the conversion of multimedia content and data from and into different protocols; Administration of user rights on mobile, wireless computer and telecommunications networks; Digitization of documents; Software as a service (SaaS); Cloud computing; Consultancy in the field of cloud computing networks and applications; Electronic time-stamping, recording and storage of data; Providing of consultancy and information relating to information technology infrastructure and architecture; Services rendered by application service providers featuring computer software for application programming interfaces (APIs), for use in time-stamping, recording and storage of data from computer software used by others; Hosting of platforms using blockchain or other technology.

2.        European Union trade mark application No 15 467 251 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 467 251 ‘STRATUMN’. The opposition is based on European Union trade mark registration No 10 679 512 ‘XtratuM’. 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: Computer software; Computer software [programmes]; Interfaces (software); Software drivers; Computer software for data communications; Computer programs (downloadable); Data communication software; Computer software programs; Computer software for data communications; Computer software programs; Software [programas grabados]; Recorded computer software; Data processing software; Computer software, recorded; VPN [virtual private network] operating software; WAN [wide area network] operating software; Interface software; Computer software for data processing.

Class 38: Telecommunications; Transmission of interactive entertainment software.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Development of computer software; Diagnosis of faults in computer software; Designing computer software for controlling self-service terminals; Computer software rental services; Computer software design; Consultancy for computer hardware and software; Computer hardware and software consultation services; Installation and maintenance of computer software; Repair of software; Updating of computer software relating to computer security and computer risk prevention; Software development for others; Rental of computers and computer software; Computer software consultation; Computer software programming services; Computer programming and software services; Providing information, advice and consultancy services in the field of computer software; Consultancy relating to computer software; Services for the writing of computer software; Software consulting; Configuration of computer software; Maintenance and upgrading of computer software; Installation, maintenance and repair of computer software; Hiring of computer software; Computer software rental; Consultancy in the fields of computer hardware and computer software; Computer software development for others; Maintenance, installation and repair of computer software; Computer and software rental services; Computer software design and development; Installation repair and maintenance of computer software; Software (rental of computer -); Maintaining and updating of computer software; Preparation of reports relating to computer software; Troubleshooting of computer hardware and computer software problems; Consultancy in the field of computer software; Computer software maintenance services; Consultancy (computer software -); Computer software consultation; Design of graphic software systems; Rental of computer and computer software; Software research; Providing temporary use of non-downloadable computer software for preparing invoices over computer networks, intranets and the internet; Design, drawing and commissioned writing of computer software; Consultancy in the field of computer hardware and computer software; Consultancy with regard to computer software; Computer software consultancy; Technical project studies in the field of computer hardware and software; Computer software installation and maintenance; Customization of computer hardware and software; Software consultancy; Software consultancy; Software engineering; Conducting feasibility studies relating to computer software; Computer software technical support services; Computer hardware and software consulting services; Computer software consultancy; Design, maintenance, development and updating of computer software; Software development services; Quality control relating to computer software; Updating and maintenance of software; Consultancy services in the field of computer hardware and software; Computer software design; Research and consultancy services relating to computer software; Development of computer software application solutions; Computer programming and software services; Advisory services in the field of product development and quality improvement of software; Application service provider (ASP), namely, hosting computer software applications of others; Computer software (maintenance of); Custom design of software packages; Computer and computer software rental; Providing temporary use of non-downloadable computer software for use in the creation and publication of online journals and blogs; Calibration services relating to computer software; Computer software design; Project studies relating to software; Research and development of computer software; Design of computer programs and software relating to aircraft; Leasing of computer software for reading a data stream; Computer software installation; Rental of computer software; Leasing of computer software; Computer software design services; Maintenance of computer software; Advisory services relating to computer software used for printing; Feasibility study services relating to computer software; Maintenance of computer software; Maintenance of computer software; Leasing of computer software relating to price quotes; Maintenance and updating of computer software; Installation of computer software; Advisory services relating to computer software used for graphics; Computer software consultancy; Software customisation services; Developing and updating of computer software; Installation and maintenance of computer software; Consultancy and advisory services in the field of computer hardware and software; Programming of educational software; Maintenance, repair and updating of computer software systems; Technical project studies in the field of computer equipment and software; Software authoring; Support and maintenance services for computer software; Design and development of computer software; Installation and customisation of computer applications software; Consulting services in the field of computer software; Writing of computer software; Consulting services in the field of computer software; Updating of software; Development of interactive multimedia software; Services for the leasing of computer software; Design, development, maintenance and updating of computer software; Design and development of computer software; Consulting in the field of computer software; Software development; Updating of computer software; Updating of computer software relating to computer security and prevention of computer risks; Computer software and hardware consulting services; Rental of computer software and programs; Updating of computer software; Computer software consultation services; Research and development of computer software; Creation of computer software for data processes; Support and maintenance services for computer software; Support and maintenance services for computer software; Design and development of software; Rental of computer hardware and software; Computer software design for others; Development of software solutions for Internet providers and Internet users; Design of software; Maintenance of computer software; Rental of computer hardware and computer software; Installation of computer software; Consultancy services relating to computers and computer software; Development of application solutions for computer software; Troubleshooting of computer hardware and computer software problems; Repairing of computer software; Development of computer software for others; Services updating of computer software; Design, maintenance and updating of computer software; Updating of software; Development of software, for others; Design and development of computer software; Software installation; Providing temporary use of non-downloadable computer software for preparing shipping documents over computer networks, intranets and the internet; Consultancy in the field of computer hardware and computer software; Computer software (updating of-); Development of software for secure network operations; Updating of computer software; Providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; Installation and maintenance of software; Technical project studies in the field of computer hardware and software; Rental of computers and computer software; Rental of computer and computer software; Rental of computer software programs; Development and design of computer hardware; Installation of computer software; Advisory services relating to software for computers; Installation of computer software; Consulting services in the field of computer software; Computer rental and updating of computer software; Design, development, maintenance and updating of computer software; Rental of computer software programs; Development, design, maintenance and updating of computer software; Rental of computer programs (software); Software installation services; Computer software consultancy; Advisory services relating to computer software used for publishing; Design and development of computer software; Computer software installation; Consulting services relating to software; Software leasing services; Rental of software; Rental of software; Development of computer software; Development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); Repair of computer software; Consultancy in the field of computer hardware and software; Advisory services relating to software; Advisory services related to computer software; Maintenance and repair of software; Computer software design services; Professional advisory services relating to computer software; Design, development and implementation of computer software; Upgrading of computer software; Software rental; Updating and upgrading of computer software; Consultancy service relating to computer software; Installation, maintenance, repair and servicing of computer software; Configuration of computer software; Software creation; Maintenance services for computer software; Rental of software and programs; Maintenance of computer software used for operating filling apparatus and machines; Computer programming services, computer software design; Installation, maintenance and repair of computer software; Advisory services relating to the use of computer software; Providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; Installation repair and maintenance of computer software; Renting out hardware and software; Design, maintenance, rental and updating of computer software; Creation, maintenance and adaptation of software; Installation and maintenance of software; Software design and development; Advisory services relating to man-machine interfaces for computer software; Advisory services relating to the acquisition of computer software; Computer programming; Installation and maintenance of computer software; Consultancy in the field of software design; Support and maintenance services for computer software; Rental of computers and software; Developing of driver and operating system software; Software design and software development; Maintenance of computer software; Computer software consultancy; Maintenance of computer software; Services for the design of electronic data processing software; Rental of computer hardware and computer software; Support and maintenance services for computer software; Advisory services relating to the rental of computers or computer software; Updating of computer software; Image processing software design; Maintenance or upgrading of computer software; Maintenance of computer software; Leasing of computer hardware and computer software; Design and updating of computer software; Computer programming and software design; Consultancy in relation to computer software; Consultancy in the field of computer software; Rental of application software; Design of computer software; Computer software consultancy; computer software development and updating; Providing temporary use of non-downloadable computer software for tracking freight over computer networks, intranets and the internet; Developing and updating of computer software; Updating and maintenance of computer software and programs; Rental of computer hardware and software; Maintenance of Internet access software.

The contested goods and services are the following:

Class 9: Computer programs, computer software and downloadable applications for mobile devices, telephones and tablets; Computer software and computer programs for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Computer software for time-stamping, recording and storage of data and information using blockchain technology; Computer software for operations over a secure network; Computer programs for user interface design; Computer software for use in automating and managing operating procedures; Secure terminals for electronic transactions; Software for integration of applications and databases; Digital recording and storage media for data and information; Computer programs and software for providing secure remote access to computer and communications networks; Data-processing equipment; Electronic keys; USB flash drives; Downloadable computer security software; Computer programs and software for the conversion of multimedia content and data from and into different protocols.

Class 35: Advertising, promotion and marketing; Business administration; Business management; Office functions; Auditing of companies; Assistance with corporate management; Business management and organisation consultancy; Consultancy in the management of operational processes; Reconfiguration of business processes; Arranging of subscriptions to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Arranging subscriptions to computer database servers; Commercial administration of licences relating to computer software; Computerised file management; Computerized handling of registers; Computerised file management; Consultancy relating to methodology for monitoring and analysis the processing of information; Information relating to the secure recording and storage of information and data using blockchain technology.

Class 38: Telecommunications; Electronic communications via fibre-optic networks or mobile, wireless computer and telecommunications networks; Information about telecommunication; Interactive communication services; Providing of access enabling temporary use of non-downloadable computer software applications; Providing of multi-user access to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to databases on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to electronic transaction, communications and information platforms on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Secure transmission of data and information; Providing of telecommunications connections to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Rental of access time to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Monitoring, processing, broadcasting and reception of signals and information data processed by computers or by telecommunications apparatus and instruments.

Class 42: Engineering evaluations and appraisals in the fields of science and technology; Design, development, maintenance and updating of computer programs, computer software and downloadable applications for mobile devices, telephones and tablets; Design, development, maintenance and updating of computer software for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Design, development, maintenance and updating of computer software for time-stamping, recording and storage of data and information using blockchain technology; Design, development, maintenance and updating of computer software for operations over a secure network; Computer programming for the design of user interfaces; Design, development, maintenance and updating of computer software for the automation and management of operational processes; Design, development, maintenance and updating of computer software for the integration of applications and databases; Design, development, maintenance and updating of computer programs and software for providing secure remote access to computer and communications networks; Design, development, maintenance and updating of downloadable computer security software; Design, development, maintenance and updating of computer programs and software for the conversion of multimedia content and data from and into different protocols; Administration of user rights on mobile, wireless computer and telecommunications networks; Digitization of documents; Software as a service (SaaS); Cloud computing; Consultancy in the field of cloud computing networks and applications; Electronic time-stamping, recording and storage of data; Providing of consultancy and information relating to information technology infrastructure and architecture; Services rendered by application service providers featuring computer software for application programming interfaces (APIs), for use in time-stamping, recording and storage of data from computer software used by others; Hosting of platforms using blockchain or other technology.

Class 45: Granting and management of licences for computer software and computer programs; Granting and management of technology licences; Providing of user authentication services in connection with electronic commerce transactions.

The term ‘namely’, used in the opponent’s list of services in Class 42 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 computer programs include, as a broader category the opponent’s computer programs (downloadable). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer software and downloadable applications for mobile devices, telephones and tablets; Computer software and computer programs for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Computer software for time-stamping, recording and storage of data and information using blockchain technology; Computer software for operations over a secure network; Computer programs for user interface design; Computer software for use in automating and managing operating procedures; Software for integration of applications and databases; Computer programs and software for providing secure remote access to computer and communications networks; Downloadable computer security software; Computer programs and software for the conversion of multimedia content and data from and into different protocols are included in the broad categories of the opponent’s computer software; computer software [programmes]. Therefore, they are identical.

The contested data-processing equipment designates the equipment for data processing such as computers and any peripherals used in this process. The contested secure terminals for electronic transactions are computer peripherals for securing transactions. These goods are similar to the opponent’s computer software since these goods are complementary, they coincide in their manufacturers and distributions channels and they target the same public.

The contested digital recording and storage media for data and information; Electronic keys; USB flash drives are data storage media. There is a close correlation between software for data processing and the recording devices as very often recording devices, such as pen drives, come with their own integrated software. Consumers could be confused into believing that these goods coincide in origin or producer. For that reason, the above mentioned contested goods are considered to be similar to a low degree to the opponent’s data processing software.

Contested services in Class 35

The contested information relating to the secure recording and storage of information and data using blockchain technology are similar to the opponent’s providing information, advice and consultancy services in the field of computer software in Class 42. These services relate to the same IT field and they are provided by the same entities (IT consultants) to the same consumers.

The contested advertising, promotion and marketing services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity.

The contested business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as the contested arranging of subscriptions to global telecommunications networks (the internet) or private-access networks (intranets, extranets); arranging subscriptions to computer database servers; commercial administration of licences relating to computer software.

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company such as the contested auditing of companies; assistance with corporate management; business management and organisation consultancy; consultancy in the management of operational processes; reconfiguration of business processes; consultancy relating to methodology for monitoring and analysis the processing of information. These services are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

The contested office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise such as the contested computerised file management; computerized handling of registers; computerised file management.

The above mentioned contested services are aimed at supporting or helping other businesses to do or improve their business. They are not similar to the opponent’s goods and services in Classes 9, 38 and 42 which mainly cover computer software and programs; telecommunications services and scientific and technological services, industrial analysis and research services, design and development of computer hardware and software. These goods and services differ in their natures, purposes and distribution channels since they are not provided/manufactured by the same undertakings (advertising agencies, business consultants, auditors, outsourcing companies versus IT consultants/companies, engineers, telecommunication companies). Furthermore, they are neither complementary nor in competition with each other.

According to the opponent, some of contested services such as computerised file management; arranging of subscriptions to global telecommunications networks (the internet), commercial administration of licences relating to computer software are so closely linked to computers, software and telecommunications, that these services are similar. The Opposition Division does not share this point of view. The mere fact the some of the contested services use for instance telecommunication networks, computers and software is clearly not sufficient to render these goods and services similar. They have different providers and they are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Therefore, they are not similar.

Contested services in Class 38

Telecommunications are identically contained in both lists of services in Class 38.

The contested electronic communications via fibre-optic networks or mobile, wireless computer and telecommunications networks; Information about telecommunication; Interactive communication services; Providing of access enabling temporary use of non-downloadable computer software applications; Providing of multi-user access to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to databases on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Providing of access to electronic transaction, communications and information platforms on global telecommunications networks (the internet) or private-access networks (intranets, extranets); Secure transmission of data and information; Providing of telecommunications connections to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Rental of access time to global telecommunications networks (the internet) or private-access networks (intranets, extranets); Monitoring, processing, broadcasting and reception of signals and information data processed by computers or by telecommunications apparatus and instruments are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested engineering evaluations and appraisals in the fields of science and technology are included in the opponent’s broad wording scientific and technological services. Therefore, they are identical.

The contested computer programming for the design of user interfaces is included in the opponent’s computer programming services. Therefore, they are identical.

The contested design, development, maintenance and updating of computer programs, computer software and downloadable applications for mobile devices, telephones and tablets; Design, development, maintenance and updating of computer software for the secure time-stamping, recording and storage of transactions, statements, authorisations and general data and information; Design, development, maintenance and updating of computer software for time-stamping, recording and storage of data and information using blockchain technology; Design, development, maintenance and updating of computer software for operations over a secure network; Design, development, maintenance and updating of computer software for the automation and management of operational processes; Design, development, maintenance and updating of computer software for the integration of applications and databases; Design, development, maintenance and updating of computer programs and software for providing secure remote access to computer and communications networks; Design, development, maintenance and updating of downloadable computer security software; Design, development, maintenance and updating of computer programs and software for the conversion of multimedia content and data from and into different protocols are services relating to the design, development, maintenance and updating of specific computer software. They are included in, or overlap with, the opponent’s broad categories computer software design; development of computer software; maintenance and upgrading of computer software and, are therefore, identical.

The contested consultancy in the field of cloud computing networks and applications; providing of consultancy and information relating to information technology infrastructure and architecture are included in the opponent’s consultancy services in the field of computer hardware and software. Therefore, they are identical.

The contested services rendered by application service providers featuring computer software for application programming interfaces (APIs), for use in time-stamping, recording and storage of data from computer software used by others are included in the opponent’s broad categories software development for others, software engineering. Therefore, they are identical.

The contested 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. The contested cloud computing is the practice of using a network of remote servers hosted on the internet to store, manage and process data, rather than a local server or a personal computer. These services are included in the broad category of, or overlap with, the opponent’s application services provider (ASP), namely hosting computer software applications of others. Therefore, they are identical.

Likewise, the contested hosting of platforms using blockchain or other technology is included in the broad category of, or overlaps with, the opponent’s application services provider (ASP), namely hosting computer software applications of others. Therefore, they are identical.

The contested administration of user rights on mobile, wireless computer and telecommunications networks; Digitization of documents; Electronic time-stamping, recording and storage of data are IT services relating to the administration of user rights and to data (conversion of data, recording and storage of data). They are similar to the opponent’s computer programming and software services to the extent that they coincide in their distribution channels, providers (IT companies and consultants) and relevant public.

Contested services in Class 45

The contested granting and management of licences for computer software and computer programs; granting and management of technology licences are legal services provided by legal firms. Even though they refer to computer software and programs and new technologies, they are not provided by IT/software or telecommunications companies. Therefore, they are not similar to the opponent’s goods and services in Classes 9, 38 and 42. These goods and services do not have the same natures, purposes, providers/manufacturers and they are neither complementary nor in competition to each other.

The contested services providing of user authentication services in connection with electronic commerce transactions are aimed at checking the identity of a person in relation to electronic commerce transactions. These services are for securing commercial transactions. They are usually provided by banks or providers of electronic commerce. They are not similar to the opponent’s goods and services in Classes 9, 38 and 42 which mainly cover computer software; telecommunications; scientific and technological services, industrial analysis and research services, design and development of computer hardware and software. These goods and services differ in their natures, purposes and distribution channels since they are not provided/manufactured by the same undertakings. Furthermore, they are neither complementary nor in competition with each other.

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 varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

XtratuM	STRATUMN
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 signs ‘XtratuM’ and ‘STRATUMN’ are word marks composed respectively of an arbitrary term which has no meaning in relation to the goods and services in question. Therefore, they are distinctive.

It is also worth mentioning that both marks are word marks and thus any differences in the use of capital or lower case characters is immaterial since protection is sought for the word itself rather than the actual representation.

Visually, the signs coincide in the six letters ‘*-T-R-A-T-U-M-*’ placed in the same order. However, they differ in their initial letters ‘X’ against ‘S’ and in the additional final letter ‘N’ of the contested sign. The visual difference between the initial letters ‘X’ and ‘S’ is quite striking whereas the final letter ‘N’ placed after the letter ‘M’ of the contested sign is likely to go unnoticed. Therefore, the signs are visually similar at most 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 ‘T-R-A-T-U-M’, present identically in both signs. Furthermore, the sound of the first letter ‘X’ of the earlier mark is extremely similar to the sound of the first letter ‘S’ of the contested sign and in some languages like French, the beginnings of the signs /xtra/ and /stra/ are almost identical. Regarding the sound of the letter ‘N’ of the contested sign, due to its position at the very end of the sign after the letter ‘M’, it is hardly audible. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 goods and services are partly identical, partly similar to varying degrees and partly dissimilar.

The earlier mark is inherently distinctive to an average degree.

The signs are visually similar at most to an average degree and aurally similar to a high degree. The signs have no concepts that could help to differentiate them.

The main difference between the signs occurs at the beginning of both marks, and the beginnings of marks are usually given special relevance in assessing likelihood of confusion because this is the part that consumers perceive first. However, the Opposition Division is of the opinion that, in the present case, it would not be reasonable to place decisive weight on the different beginnings, as the difference amounts to one letter/one sound only, which will certainly not be perceived separately from the rest of the marks. This is especially true from the phonetic point of view since the sounds of the initial parts ‘xtra’ and ‘stra’ of the signs are highly similar or even almost identical.

Therefore, while it is true that the initial part of the word marks may be liable to attract the consumer’s attention more than the following parts, the difference in the first letter of each sign is not enough to counteract the similarity between the signs in respect of almost all the other letters, when they are identically displayed and make up the majority of the signs in issue (22/05/2012, T-585/10, Penteo, EU:T:2012:251, § 67). Furthermore, as explained above, the difference in the additional final letter ‘N’ of the contested sign is aurally hardly audible and visually it does not introduce a significant difference between the signs.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even when it displays a high degree of attention. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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 those of the earlier trade mark. This is also valid for the goods similar to a low degree given the relevant similarities between the signs.

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

Catherine MEDINA

Frédérique SULPICE

Pedro JURADO MONTEJANO

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.