OPPOSITION No B 2 712 118

International Business Machines Corporation, New Orchard Road, Armonk, New York 10504, United States of America (opponent), represented by Sylvie Martin, Compagnie IBM France Intellectual Property Department, ZAC Meridia Immeuble, The Crown, 21 Avenue Simone Veil, CS 43338, 06206 Nice Cedex, France (employee representative)

a g a i n s t

Theofanis Alexandropoulos, Am Vogelherd 20, 82110 Germering, Germany (applicant), represented by Ralf Bucher, Alte Landstr. 23, 85521 Ottobrunn, Germany (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 118 is partially upheld, namely for the following contested goods and services:

Class 9: Data processing equipment, computers; computer software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context.

Class 42: Design and development of computer hardware and software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; computer hardware and software consultancy, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; computer programming, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; consultancy in the field of computers, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; technical project management in the field of electronic data processing, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; IT consultancy, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context.

2.        European Union trade mark application No 15 265 085 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 15 265 085 ‘Algorithmixx’, namely against some of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registrations No 3 034 808 ‘ALGORITHMICS’ and No 5 603 221 ‘ALGORITHMICS’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

European Union trade mark registration No 3 034 808

Class 9: Computer software for determining and analysing degrees of risk and rewards for use in the financial services industry; computer software, computer software for use in finance industry; computer software for finance risk management.

Class 42: Software development, implementation and consulting services related to financial risk management software.

European Union trade mark registration No 5 603 221

Class 9: Computer disks holders.

Class 42: Providing information technology help center services for customers to provide both business hours and after-hours support of financial risk management and measurement systems; providing management and measurement services for data warehousing in the financial field, namely, providing management and measurement services for organising and operating a system for storing, retrieving and managing large amounts of any type of data in the financial field.

The contested goods and services are the following:

Class 9: Data processing equipment, computers; computer software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; fire-extinguishing apparatus.

Class 42: Industrial analysis; design and development of computer hardware and software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; computer hardware and software consultancy, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; computer programming, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; consultancy in the field of computers, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; technical project management in the field of electronic data processing, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; IT consultancy, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context.

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

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

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

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.

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 software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested data processing equipment, computers are similar to the opponent’s computer software. These goods are complementary. Furthermore, they may coincide in terms of distribution channels, relevant public and producers.

The contested fire extinguishing apparatus is portable or wheeled apparatus for putting out small fires by ejecting extinguishing chemicals. It is dissimilar to the opponent’s goods and services, which are IT goods and services. They do not have the same nature, purpose and method of use. The goods are neither complementary nor in competition with each other. They have different manufacturers/providers and the distribution channels are different.

Contested services in Class 42

The contested design and development of computer software, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context include, as a broader category, or overlap with the opponent’s software development services related to financial risk management software. 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 computer software consultancy, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context overlaps with the opponent’s software development, implementation and consulting services related to financial risk management software, in the sense that these services are all related to software consulting. Therefore, they are identical.

Computer programming is the process of developing and implementing various sets of instructions to enable a computer to perform a certain task. These instructions are computer programs and they help the computer to operate smoothly. Therefore, the contested computer programming, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context includes, as a broader category, or overlaps with the opponent’s software development services related to financial risk management software. 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 consultancy in the field of computers, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; IT consultancy, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context include, as broader categories, or overlap with the opponent’s software consulting services related to financial risk management software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested design and development of computer hardware, in particular a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context; computer hardware consultancy, in particular in relation to a runtime environment, application layer and software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context are similar to the opponent’s software development, implementation and consulting services related to financial risk management software. The contested services refer to the design and development of hardware devices (or consulting related to hardware), which are the physical components of the system, and the opponent’s services relate to the computer programs that perform a desired sequence of operations. The contested services and the opponent’s services include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by engineers, computer programmers, etc. Moreover, these services are complementary and they most likely target the same group of consumers using related software and hardware services.

The contested technical project management in the field of electronic data processing, in particular in relation to a runtime environment, an application layer and a software framework, in particular being intended for solving problems within interdisciplinary projects and relations for answering complex questions within a globalised business environment for the purposes of finding the optimum agreement and/or solution depending on the specific context is a broad category of services that is similar to the opponent’s software development, implementation and consulting services related to financial risk management software. These services may coincide in producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested industrial analysis consists essentially of research and scientific/technological services that contribute to the generation, dissemination and application of scientific and technical knowledge. The opponent’s services are specialised information technology services for development, implementation and consulting. Such services are provided by specialised companies in the IT field; they do not have the same providers as the opponent’s services, they have different distribution channels and they are not complementary or in competition with each other. Therefore, they are dissimilar.

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 are directed at the public at large, as well as to business customers with specific professional knowledge or expertise in the IT or financial field. The degree of attention may vary from average to high depending on the specialised nature of the goods and services.

3. The signs

The earlier trade marks consist of the same word, ‘ALGORITHMICS’. The following comparison will be made as if it were only one trade mark.

ALGORITHMICS	Algorithmixx
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.

For reasons of procedural economy, the Opposition Division finds it appropriate to focus on the non-English-speaking part of the public, for which ‘ALGORITHMICS’, as a whole, is meaningless.

Both trade marks are single-word marks, the earlier mark being ‘ALGORITHMICS’, while the contested sign is ‘Algorithmixx’. Both trade marks will be understood by the relevant public as referring to an algorithm, which is ‘a series of mathematical steps, especially in a computer program, which will give you the answer to a particular kind of problem or question’ (information extracted from Collins Dictionary, on 30/08/2017, at https://www.collinsdictionary.com/dictionary/english/algorithm).

Given the nature of the goods and services as sophisticated IT and technical products and services, both marks contain beginnings that are rather allusive for the relevant public in relation to software or IT-related services, in the sense that it will be understood that the purpose of these goods and services is the development of a new algorithm. Nevertheless, the lower degree of distinctive character of an element does not necessarily imply that this element cannot constitute a dominant element, since, because of its position in the sign or its size, in particular, it may make an impression on consumers and be remembered by them (10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 35).

Visually, the signs coincide in the sequence of letters ‘ALGORITHMI’. They differ in their two last letters, ‘xx’ in the contested sign and ‘CS’ in the earlier mark.

The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, the fact that one mark is in upper case and the other in lower case is irrelevant.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Therefore, given the allusive character of the letters ‘ALGORITHM’ (at least in relation to some goods), the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs will be identical for at least part of the public, such as the French-speaking public, because the letters ‘CS’ and the letters ‘xx’ will be pronounced the same way. For the remaining part of the public, the signs are aurally similar to a high degree.

Conceptually, the component ‘ALGORITHM’, included in both signs, will be associated with the meaning explained above by the vast majority of the public. Although this element will be allusive in both marks, this lower degree of distinctive character does not preclude the signs from being conceptually similar to a certain extent (10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 41).

Therefore, the signs have to be considered conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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, despite the presence of an allusive element in the mark as stated above in section c) of this decision.

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, the conflicting signs are visually similar to a high degree, aurally identical for at least part of the public (and similar to a high degree for the remaining part of the public) and conceptually similar to a low degree for part of the public. The contested goods and services are partly identical, partly similar and partly dissimilar and the degree of attention will vary depending on the specification of the goods and services in question.

Moreover, 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).

Having in common an element with a lower than average degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are less distinctive or have an insignificant visual impact and the overall impressions of the marks are similar. There may also be likelihood of confusion if the overall impressions of the marks are highly similar or identical, which is indisputably the case in the present comparison. The identical beginnings will outweigh the difference in the two final letters in the signs. Furthermore, as stated above, the signs will be pronounced identically by a part of the public and in very similar ways by the remaining part.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part 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.

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 marks.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

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

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

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

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

On 22/08/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After an extension of two months granted by the Office, this time limit expired on 22/02/2017.

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

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division 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

Manuela RUSEVA

Patricia LOPEZ FERNANDEZ DE CORRES

Benoit VLEMINCQ

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.