OPPOSITION No B 2 767 039

WeDo Consulting – Sistemas de Informacao, S.A., Lugar do Espido, Via Norte, 4470-177 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

Institut Curie (Fondation reconnue d'utilité publique), 26, rue d'Ulm, 75248 Paris Cédex 05, France (applicant), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 039 is partially upheld, namely for the following contested goods and services:

Class 9:         Teaching apparatus and instruments; Recorded computer programs; Computer programs [downloadable software]; Compact discs; CD ROMS.

Class 42: Research, development in the industrial, scientific fields; Scientific analysis; Quality control; Computer software design; Updating of computer software, installation of computer software; Maintenance of software; Rental of software; Computer software consultancy; Creating and maintaining web sites for others; Computer system design; Computer programming; Conversion of data or documents from physical to electronic media; Reconstruction of databases; Research and development for others; Technical project studies; Evaluations, appraisals and research in the scientific and technological fields; Development of diagnostic methods; development of diagnostic sets and diagnostic tests.

2.        European Union trade mark application No 15 575 384 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 575 384 for the word mark RAIDS, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 5 156 666 for the word mark RAID. 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; computers; adapters for computers; components for computers; parts and fittings for computers; intercoms; microcomputers; minicomputers; microphones; computer memories; interfaces for computer; data processing equipment; data processing machines/computer memory devices, random access memory circuits, chips; semiconductor devices, integrated circuits, electronic circuit boards, microprocessors; electronic circuits, terminals, controllers; integrated circuits; printed circuits; magnetic disks; floppy disks; data modules; telecommunications batteries and equipment; computer software networks, wide area networks, and global computer networks; computer software used for software development and web authoring; computer related security devices for portable computer products; cases (for computers, computer peripheral devices and computer equipment); computer programs; operating system software and application software; documentation and instruction manuals recorded on machine readable media or on paper and relating to computers or computer programs; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing.

Class 42: Computer programming; design, updating and maintenance of computer software; design, installation, interconnection, testing and maintenance of software and information for computers; services for information handling systems products; technical project studies in the field of computer hardware and software; computer software consulting services; computer systems analysis; consultancy and advice relating to computer programs; rental, distribution, licensing, sub-licensing and sale of computer software; scientific and industrial research; technical support for computer programs; Internet website services; all the aforesaid services intended for the management of computer systems in the field of income guarantees for invoicing.

The contested goods and services are the following:

Class 9: Scientific and teaching apparatus and instruments; Recording substrates [magnetic]; Recorded computer programs; Computer programs [downloadable software]; Compact discs; CD ROMS; Furniture especially made for laboratories; Laboratory trays; Chemistry apparatus and instruments; Microscopes.

Class 42: Research, development in the industrial, scientific, medical, pharmaceutical, biological fields; Clinical trials; Laboratory (Scientific -) services; Scientific analysis; Biological, biotechnological, chemical, bacteriological and chemotherapy research; Quality control; Research laboratory work; Computer software design; Updating of computer software, installation of computer software; Maintenance of software; Rental of software; Computer software consultancy; Creating and maintaining web sites for others; Computer system design; Computer programming; Conversion of data or documents from physical to electronic media; Reconstruction of databases; Research and development for others; Technical project studies; Evaluations, appraisals and research in the scientific, medical and technological fields; Clinical research; Development of diagnostic methods; Development of diagnostic sets and diagnostic tests.

An interpretation of the wording of the opponent’s list of goods and services is required to determine the scope of protection of the goods and services covered by the earlier mark.

The specification ‘all the aforesaid goods/services intended for the management of computer systems in the field of income guarantees for invoicing’ used in the opponent’s list of goods and services limits the scope of protection of the earlier mark by defining the specific purpose of these goods and services, and also by referring to their targeted public, namely professionals responsible for management of computer systems. This limitation must be taken into consideration regarding each product and service on the opponent’s list during the comparison of the relevant goods and 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 teaching apparatus and instruments overlap with computers or data processing equipment in general, especially because the use of computers as basic educational apparatus is now common among the Member States. This overlap may also exist with the opponent’s computers and data processing equipment intended for the management of computer systems in the field of income guarantees for invoicing, as beside their specialised purpose, the use of these goods of the opponent for educational purposes cannot be excluded, even in this specialised field. Therefore, these contested goods and the opponent’s relevant goods are considered identical.

The contested recorded computer programs; computer programs [downloadable software] overlap with the opponent’s computer programs intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, they are identical.

The contested compact discs and CD ROMS are digital optical disc data storages. The compact disc format was originally developed to store and play only sound recordings but was later adapted for storage of data (CD-ROM). These goods and the opponent’s magnetic disks intended for the management of computer systems in the field of income guarantees for invoicing are similar to a high degree. The main and general purpose of these goods is storing data, regardless of the specific nature of their content. They may share the same producers and distribution channels, and they are in competition. Further, their relevant public might coincide as well, regardless of its specific or professional nature.

The contested recording substrates [magnetic], among others, are forming the basic layers of the opponent’s magnetic disks intended for the management of computer systems in the field of income guarantees for invoicing. For this reason, these goods are complementary. However, complementarity is not conclusive on its own for finding a similarity between the goods. The producers, distribution channels, and relevant public is different, as well as their purpose, nature and methods of use. Therefore, these goods are dissimilar. Furthermore, these contested goods do not share the same producers / providers, distribution channels and relevant public with the opponent’s remaining goods in Class 9 or with its services in Class 42, their nature, purpose and method of use is different, and they are not complementary, and are not in competition either. Therefore, these contested goods and the opponent’s relevant goods and services are dissimilar.

The contested scientific apparatus and instruments; furniture especially made for laboratories; laboratory trays; chemistry apparatus and instruments and microscopes are typical items of scientific research. Although when produced with the latest technology, some of these might contain electric or even computerised parts, the purpose, nature, method of use, producers, distribution channels and relevant public of these contested goods are different from those relating to the opponent’s goods and services, the latter being mostly computer hardware and software (and connecting services) with a specific purpose and aimed at a limited circle of consumers. Furthermore, these contested goods are not in competition with the opponent’s goods in Class 9 or with its services in Class 42, and they are also not complementary. Therefore, these contested goods and the opponent’s relevant goods and services are dissimilar.

Contested services in Class 42

The contested research in the industrial, scientific fields; research for others; research in the scientific and technological fields overlap with the opponent’s scientific and industrial research intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, they are identical.

The contested scientific analysis overlap with the opponent’s scientific research intended for the management of computer systems in the field of income guarantees for invoicing. By definition, analysis means a detailed examination or study of something so as to determine its nature, structure, or essential features (information extracted from Oxford English Dictionary on 31/07/2017 at http://www.oed.com/view/Entry/7046?redirectedFrom=analysis – eid). During this process, as part of the analysis, a scientific research regarding the given field may be necessary. Therefore, these services are considered identical.

The contested computer software design includes, as a broader category, the opponent’s design of computer software intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested updating of computer software includes, as a broader category, the opponent’s updating of computer software intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested installation of computer software includes, as a broader category, the opponent’s installation of software intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested maintenance of software includes, as a broader category, the opponent’s maintenance of software intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested rental of software includes, as a broader category, the opponent’s rental of computer software, intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested computer software consultancy includes, as a broader category, the opponent’s consultancy and advice relating to computer programs intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, these services are considered identical.

The contested creating and maintaining web sites for others overlap with the opponent’s internet website services intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, these services are considered identical.

The contested computer system design overlaps with the opponent’s design, installation, interconnection of software and information for computers intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, these services are considered identical.

The contested computer programming includes, as a broader category, the opponent’s computer programming intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested technical project studies include, as a broader category, the opponent’s technical project studies in the field of computer hardware and software intended for the management of computer systems in the field of income guarantees for invoicing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested evaluations, appraisals in the scientific and technological fields include testing and calculating activities, which overlap with the opponent’s testing and maintenance of software and information for computers intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, these services are considered identical.

The contested development of diagnostic methods; development of diagnostic sets and diagnostic tests may include the development of computer diagnostic methods, and the development of sets and kits designed to diagnose computer related issues. These services may overlap with the opponent’s computer systems analysis intended for the management of computer systems in the field of income guarantees for invoicing. Therefore, they are considered identical.  

The contested development in the industrial, scientific fields and development for others are similar to the opponent’s scientific and industrial research intended for the management of computer systems in the field of income guarantees for invoicing. Research forms a preliminary part of development in these areas and these services have a similar nature. Further, they can be aimed at the same public, and can be provided by the same service providers.

The contested quality control is, by definition, the maintenance of the desired quality in a manufactured product, especially by comparison of a sample of the output with the specification and any process for maintaining a desired quality of product or output (information extracted from Oxford English Dictionary on 31/07/2017 at http://www.oed.com/view/Entry/155878?redirectedFrom=quality+control#eid27358537). Therefore, it has the same purpose and nature as the opponent’s testing and maintenance of software and information for computers intended for the management of computer systems in the field of income guarantees for invoicing. Furthermore, these services may have the same provider, and their targeted public may also coincide. It follows that these services are similar.

The contested conversion of data or documents from physical to electronic media involve the conversion of hard copy documents or other data such as images, sound or signals from the physical or analogue state to an electronic form, and these services are often included in computer programming. For this reason, these contested services are similar to the opponent’s computer programming intended for the management of computer systems in the field of income guarantees for invoicing, as they may have the same provider and distribution channels, and they might be aimed at the same relevant public.

The contested reconstruction of databases is similar to the opponent’s updating and maintenance of computer software intended for the management of computer systems in the field of income guarantees for invoicing, as they can coincide in their producers, end users and distribution channels.

The contested research, development in the medical, pharmaceutical, biological fields; clinical trials; laboratory (scientific -) services; biological, biotechnological, chemical, bacteriological and chemotherapy research; research laboratory work; evaluations, appraisals and research in the medical field; clinical research are research and development services in very special fields, for example biology and medical sciences, aimed at a specialised, professional public. Although these services might show some similarities with scientific and industrial research services in general, the opponent’s specification of the latter services, namely scientific and industrial research intended for the management of computer systems in the field of income guarantees for invoicing excludes the similarity between them, by clearly defining a totally different purpose, method of use, provider, distribution channel and targeted public. This finding is even more true for the rest of the opponent’s goods in Class 9 and services in Class 42. Therefore, these contested services are dissimilar to the goods and services covered by the earlier mark.

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.

The goods and services found to be identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise.

However, as the goods and services of the contested mark target the general and professional public and the goods and services covered by the earlier mark target a professional public exclusively, the relevant public for assessing likelihood of confusion will be the professional public only (professionals responsible for management of computer systems).

The degree of attention will vary from average to high, due to the specialised nature and the generally higher price of some of the goods and services concerned.

3. The signs

RAID	RAIDS
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).

Although the English word ´RAID´, as such, has different meanings, taking into account the relevant goods and services, it is considered that the relevant professional public will associate it with the following meaning:

Computing – Redundant array of independent (or inexpensive) disks, a system for providing greater capacity, faster access, and security against data corruption by spreading data across several disk drives. (Information extracted from Oxford English Dictionary on 01/08/2017 at https://en.oxforddictionaries.com/definition/us/raid#RAID).

The contested sign ‘RAIDS’ is simply the plural form of this word.

This meaning, due to its international use, is likely to be recognised among the relevant professionals among the whole European Union.

The distinctiveness of the term ´RAID(S)´ is rather limited from the perspective of the relevant public, as it will be seen as referring to characteristics of the relevant technology (including hardware and software)-related goods and services.

Both marks consist of one word element, thus none of them has any elements that could be considered more distinctive or dominant than others.

Visually, the signs coincide in their first four letters ‘R-A-I-D’. The difference between the signs is confined to the additional fifth letter ‘S’ of the contested mark.

It must be noted that the relevant public generally tends to focus on the first part of a sign when being confronted with a trade mark. This 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. It follows that the fact that in the present case, the first four letters of the marks are identical and are in the same order, increases the degree of their visual similarity. Furthermore, the earlier mark is fully contained in the contested sign.

Therefore, the marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RAID-RAID’, present identically in both signs. The pronunciation differs in the sound of the additional last letter ‛S’ of the contested mark.

Therefore, the signs are highly similar from an aural point of view.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. By the relevant consumers, the signs may be associated with the same concept used in the field of computing, in singular while perceiving the earlier mark, and in plural while confronted with the contested sign.

Therefore, the marks are conceptually highly 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. Because of the specific meaning of the word RAID in computing as it has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as limited for the relevant goods and services.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, a part of the goods and services at issue were found to be identical or similar to various degrees, and another part of them were considered dissimilar. The relevant public consists of professionals in the field of management of computer systems, and its degree of attention varies from average to high.

The signs are visually, aurally and conceptually similar to a high degree. The likelihood of confusion between the marks is increased by the fact that the earlier mark is fully incorporated into the contested sign.

It should be noted that 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).

The Opposition Division considers that with respect to the goods and services found to be identical or similar, the one letter difference between the signs, namely an additional letter ‘S’ at the end of the contested mark is not capable of making sufficient difference to safely exclude the likelihood of confusion between the signs, despite the limited distinctiveness of the earlier mark.

Due to the visual, aural and conceptual similarities between the marks, and their overall impact on the observer, even a professional public with a high degree of attention may confuse them, with respect to goods and services which are at least similar.

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.

The rest of the contested goods and 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 goods and 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

Martin EBERL

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

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.