OPPOSITION No B 2 755 851

International Softmachine Systems, S.L., Sant Antoni María Claret, 24 3ª pl., 08037 Barcelona, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Hands (IP) Holdings Pty Ltd, 8/14 Rodborough Road, Frenchs Forest, New South Wales 2086, Australia (applicant), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 851 is partially upheld, namely for the following contested services:

Class 42:        Engineering; none of the aforesaid relating to rail transport or the railway industry.

2.        European Union trade mark application No 14 786 917 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 786 917. The opposition is based on Spanish trade mark registrations No 2 852 933 ‘ETEMPO’ and No 2 275 421 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The priority date of the contested application is 14/10/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 14/10/2010 to 13/10/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Spanish trade mark registration No 2 852 933

Class 9:        Operating system software and utilities; software and/or for computer networks management and tools for development of software to be used by computer networks managers, recorded or registered software programs.

Class 35:        Assistance services to business and industrial management, import and export, business representation and exclusive retail; advertisement services.

Spanish trade mark registration No 2 275 421

Class 35:        Business and industrial management services, import and export, representation, advertising of scientific, electric, electronic, surveying, optical, weighing, measuring, signalling and control devices and instruments, information processing and computers.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 19/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/12/2016 to submit evidence of use of the earlier trade marks. On 20/12/2016 and 21/12/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is the following:

• Six affidavits by clients of the opponent, in Spanish (with translations into English), dated between 23/07/2014 and 31/07/2014, explaining that the opponent has installed a product called ‘TEMPO’ in their IT systems. The statements indicate different installation dates between 13/03/2006 and 31/10/2012. All of the affidavits state that the installed products were in use at the date of signing. None of the affidavits specifies what the product in question is.
• Fifty-three invoices, in Spanish, dated between 28/10/2010 and 28/03/2014. They list, inter alia, goods with the following indications: ‘eTEMPO’ (with further specifications such as ‘Corporativo- SQL’ and ‘Corporativo- ORACLE’), on 39 invoices altogether; and ‘Tempo’, also present as ‘Advance/Ad Tempo’ (with further specifications such as ‘Milenium-pack 5 lic-SQL’, ‘Milenium-Control de Visitas-SQL’ and ‘Milenium- Control Externo SQL’), on 46 invoices altogether. The goods invoiced under the mark ‘eTEMPO’ amount to at least several thousand euros per invoice. The same applies to the goods invoiced under the mark ‘Tempo’, including with further specifications. The invoices are addressed to a number of companies in different Spanish cities, such as Granollers (Barcelona), Madrid, Gijon, Puigpelat (Tarragona) and Cartuja Baja (Zaragoza), and some of them are addressed to companies in Andorra. There are a further 21 invoices dated outside the relevant period. There is also one purchase order, dated 25/03/2015, concerning ‘Advanced Tempo’ and ‘eTempo’ products, and two purchase orders dated outside the relevant period.
• Two brochures, issued by the opponent in Spanish (with partial translations into English), undated. It is explained that ‘[s]ince the year 1989 and with more than 1500 clients throughout the world, SoftMachine develops for all the areas involved in People Management’. Information is provided about, inter alia, the products marked ‘Minitempo’ , ‘[p]roduct oriented towards SME that is very easy to install, use and maintain. Its minimal configurability makes it ideal for simple low-cost solutions’; ‘Tempo’ , ‘an ideal product for SME which nevertheless requires greater flexibility and configurability. Its capacity to generate reports and formulas distinguishes it from other products on the market’; ‘Advanced Tempo’ , ‘its script programming language and various report generators that allows you to exploit the information from different perspectives’; and ‘eTEMPO’  , ‘[e]mployee Portal: Oriented towards employees as well as area managers, it allows both a broad range of enquiries as well as a potent workflow management of requests’. It is also explained that ‘eTempo is the time management portal that allows employees to clock in, submit requests for leave and vacations, justify incidents and consult time schedules and statistics. eTempo is also a Workflow tool for processing and validating leaves, incidents and vacations’. Furthermore, it is stated that ‘Advanced Tempo.NET is a product that includes the latest technology applied to workplace time management … efficiently manages human resources, allowing mid-level managers to make efficient operational decisions, having access to detailed information on their teams’.
• An excerpt from a ‘User’s Guide’, undated. It refers to a product, ‘ADTEMPO’, as a ‘Presence Control application’ for ‘daily control of the movements and activities’ of employees. The following sign is depicted: .
• Two printouts of presentations. One of them (‘Bienvenida y presentación de la jornada’/‘Welcome and presentation of the conference’) refers to events on 19/10/2011 and includes the following text: ‘The first Tempo solution saw the light in 1989 under the DOS operating system … We are currently developing the new Tempo.NET “Full Web” that is due at the end of 2011’. The other one, ‘Mirando al futuro. Ayudando a gestionar personas’/‘Looking at the future, Helping to manage people’, states that there are ‘more than 1000 clients in Spain’.
• A catalogue, entitled ‘eTempo Portal de Gestión Horaria 100% Web’, dated 15/11/2016 (outside the relevant period). It provides information already specified above regarding the opportunities that the product creates with regard to the management of employees’ time.
• An article, entitled ‘De control a gestión del tiempo’ (‘From time control to time management’), dated 21/09/2011, in Spanish (with a partial translation into English). The article states that ‘[u]ntil now Tempo has focuses on large clients … Softmachine is now about to launch MiniTempo, a simplified yet customisable adaptation, so as to grow within the SME market’.
• Case studies consisting of brief notes about the implementation of products by the opponent in different companies. One of the case studies is dated in 2009, one in 2011, one refers to 2012 and the rest are undated. The products referred to are marked as ‘Tempo’ or ‘eTempo’, with the further specifications listed above, and are computer software products for managing employees’ schedules and absences.
• Printouts from the website of the opponent (http://softmachine.es) bearing a printing date of 10/09/2014, showing posts dated 2013 and 2014. The printouts refer to the installation of employee time management software products, marked as ‘Tempo’ or ‘eTempo’, in the systems of various clients of the opponent.
• Other brochures (in Spanish with some entries in English), undated, referring to computer systems for managing employees’ ‘time and attendance’, depicting the signs  and .
• Two invoices, dated outside the relevant period, issued to the opponent for the creation of advertisements and corporate dossiers.
• Four contracts with clients of the opponent dated between 23/10/2015 and 24/07/2015, and three dated outside the relevant period. The contracts concern maintenance services for the installed ‘Tempo’ and ‘eTempo’ software products.

Place of use

The evidence shows that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in the invoices in cities in Spain, such as Granollers (Barcelona), Madrid, Gijon, Puigpelat (Tarragona) and Cartuja Baja (Zaragoza).

Some of the invoices issued by the opponent are addressed to companies in Andorra.

According to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. This applies by analogy to national trade marks.

The evidence shows that the goods (specific software products) were developed in Spain and that some of them were sold in Andorra. This clearly shows that the goods were exported from the relevant territory in these particular cases. Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Therefore, the evidence relates to the relevant territory.

Time of use

All of the affidavits, 53 of the invoices, the printouts from the opponent’s website and some of the promotional materials are dated within the relevant period. Some of the materials, such as the brochures, are not dated. However, they reflect the information provided in the materials clearly dated within the relevant period, in that they refer to the same products and signs. Therefore, the undated brochures are also considered to relate to the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). In the case at hand, the evidence referring to use outside the relevant period (e.g. some of the invoices) does not refer to or reflect the use made of the opponent’s marks within the relevant period. This evidence, therefore, will not be taken into account.

However, the evidence clearly dated within the relevant period and the evidence that can be related to it is sufficient to conclude that use was made within the relevant period.

Extent of use

The documents listed above, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate invoiced amounts that are significant and, furthermore, they are dated within a continuous period of more than three years. The invoices refer to goods sold to companies in a number of cities within the relevant territory, as well as to export of goods.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In relation to earlier Spanish trade mark registration No 2 275 421, the Opposition Division finds it appropriate to start the analysis of nature of use with regard to use for the services for which the earlier right is registered. The evidence submitted does not refer to any use for any of the services for which this earlier right is registered. The only services referred to in the evidence are those listed as contract maintenance services for the installed software. These, however, do not fall into any of the categories of services in Class 35 for which the earlier right is registered.

It follows from the above that the evidence does not show use for the services for which earlier Spanish trade mark registration No 2 275 421 is registered. Therefore, as one of the conditions listed above for proving nature of use is not fulfilled, there is no need to analyse further the use of this earlier right as a trade mark or the use of the trade mark as registered.

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that earlier Spanish trade mark registration No 2 275 421 was genuinely used in the relevant territory during the relevant period of time. Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR, as far as it is based on this earlier mark.

The Opposition Division will, therefore, continue with the analysis of the nature of use of earlier Spanish trade mark registration No 2 852 933.

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between some of the relevant goods (as will be further explained below under ‘Use in relation to the registered goods and services’) and the opponent. The sign ‘eTEMPO’ (with further specifications such as ‘Corporativo- SQL’) is used on invoices. The sign ‘eTEMPO’/‘eTempo’ and the further specifications, as well as  and , are also shown on the promotional materials submitted (brochures and printouts from the opponent’s website), which refer to and describe the goods for which the signs are used. Therefore, a clear link could be established between the signs and the goods. The further specifications used (e.g. ‘Corporativo- SQL’) are not uncommon in business practice, as a certain product can be available in different versions and the particular version may need to be indicated to facilitate communication between trading parties. This is particularly the case for software products, which often come in different versions. In the present case, these additional specifications do not alter the fact that the earlier trade mark is clearly used on the invoices and promotional materials submitted, and there are information entries describing the relevant goods.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the signs ‘eTEMPO’/‘eTempo’ are used in the invoices and promotional materials submitted. The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. It is therefore considered that the invoices and promotional material depicting the sign ‘eTEMPO’/‘eTempo’ show use of the mark as registered.

The material submitted also demonstrates the use of signs such as  and . The earlier right is clearly depicted as ‘eTempo’/‘eTEMPO’ and is separated from the additional verbal and figurative elements in these signs. The additional verbal elements (‘Gestion Distribuida de Tiempos 100% web’/‘Distribution of time management 100% web’ and ‘Gestion horaria web’/‘Web Time Management’) describe the purpose of the goods, namely online time management, and they are, furthermore, depicted in a much smaller typeface than the element ‘eTempo’/‘eTEMPO’. The sign ‘@’ is commonly used for web-, software- and computer-related goods in general. As far as the additional figurative elements are concerned (circular shapes and parts thereof), they are of a decorative nature. It follows that the additional elements do not alter the distinctiveness of the earlier sign. In these depictions, the earlier mark is clearly recognisable. Therefore, the signs used show use of the mark as registered or in a form essentially the same as that registered and, therefore, constitute use of the earlier mark under Article 15 EUTMR.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Use in relation to the registered goods and services

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288.)

The earlier mark is registered for, inter alia, recorded or registered software programs. It is clear that the category recorded or registered software programs is sufficiently broad for several subcategories to be identified within it. The evidence shows that the earlier mark has been used for software products that relate to various aspects of managing employees’ time (which software products could be recorded or registered), that is, the earlier mark is used for recorded or registered software programs for time management. On the basis of the purpose of the goods for which the mark is used, the Opposition Division finds that the use of the mark for software programs for time management, which fall within the broad category of recorded or registered software programs, constitutes use for the subcategory recorded or registered software programs for time management in Class 9.

The opponent has not submitted evidence of the use of the earlier mark for the rest of the goods in Class 9 or for the services in Class 35 for which the earlier mark is registered.

Consequently, in the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 9:        Recorded or registered software programs for time management.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 on which the opposition is based are the following:

Class 9:        Recorded or registered software programs for time management.

The contested services are the following:

Class 35:        Advertising; marketing; agent, wholesale, representative services, by any means; business management; inventory management; supply and distribution management; order processing management; sales support; after sales support; product sourcing;  none of the aforesaid relating to rail transport or the railway industry; none of the aforesaid services relating to time control software.

Class 39:        Logistics services including transport, packaging and storage of goods; transportation logistics; distribution including transport of goods; transport, in particular transport of merchandise and goods by motorised vehicles, cars, lorries, railway cars, ships and airplanes; courier services; freighting; shipping, brokerage and forwarding of cargo; customs clearance services; warehousing; services of tracing and tracking; rental of warehouses; organisation and processing of returned dispatches (management of refused dispatches); rental of storage containers; management and storage premises; consulting services concerning logistics; processing and execution of dispatches; packaging articles of transportation; packaging and storage of goods; packaging of food; collection, transport and delivery of goods; packaging of products; none of the aforesaid relating to rail transport or the railway industry.

Class 42:        Product design; project management including design; quality assurance consultancy and testing; engineering and compliance; design of packaging; graphic design of logos; graphic design of promotional matter; none of the aforesaid relating to rail transport or the railway industry.

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.

Furthermore, 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.

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

The term ‘including’ indicates that the specific 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).

Contested services in Class 35

The contested services in this class encompass services rendered by persons or organizations principally with the object of: help in the working or management of a commercial undertaking; services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services; as well as services rendered around the actual sale of goods (wholesale services); and representative services.  

The advertising (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 fact that the opponent’s goods may appear in advertisements is insufficient for finding similarity with the applicant’s advertising services.

The business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share.

The wholesale services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The wholesale services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

The opponent’s goods are specific software programs. The opponent’s goods and the contested services in this class have different nature, purpose, producer/provider and distribution channels. They are neither in competition nor necessarily complementary. It follows that the contested advertising; marketing; agent, wholesale, representative services, by any means; business management; inventory management; supply and distribution management; order processing management; sales support; after sales support; product sourcing;  none of the aforesaid relating to rail transport or the railway industry; none of the aforesaid services relating to time control software are dissimilar to the opponent’s goods.

Contested services in Class 39

The contested services in this class cover services for the transport of people, animals or goods from one place to another (excluding the transportation by rail) and services necessarily connected with such transport; as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding; and packaging services.

There is no similarity between the contested services and the opponent’s goods. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are neither complementary, nor in competition. Therefore, the contested logistics services including transport, packaging and storage of goods; transportation logistics; distribution including transport of goods; transport, in particular transport of merchandise and goods by motorised vehicles, cars, lorries, railway cars, ships and airplanes; courier services; freighting; shipping, brokerage and forwarding of cargo; customs clearance services; warehousing; services of tracing and tracking; rental of warehouses; organisation and processing of returned dispatches (management of refused dispatches); rental of storage containers; management and storage premises; consulting services concerning logistics; processing and execution of dispatches; packaging articles of transportation; packaging and storage of goods; packaging of food; collection, transport and delivery of goods; packaging of products; none of the aforesaid relating to rail transport or the railway industry  are dissimilar to the opponent’s goods.

Contested services in Class 42

The contested engineering; none of the aforesaid relating to rail transport or the railway industry encompasses a variety of areas, including software engineering. It is, therefore closely linked to the opponent’s goods. This is because producers of software will also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The rest of the contested services are different product design services (oriented towards the detailed specification of a manufactured item's parts and their relationship to the whole); project management services (related to planning, executing, controlling certain type of work on a project, usually for a manufacturing of a product), as well as quality control, assurance and testing services (intended to determine the properties of various kinds of substances or materials in a variety of areas; involving reviewing the quality of all factors involved in a certain process or production, rendered in various fields). These, however, are not similar to the opponent’s goods, as the goods and services in comparison have different nature, purpose, method of use, producer/provider and distribution channels. They are neither in competition nor necessarily complementary. It follows that the contested product design; project management including design; quality assurance consultancy and testing; compliance; design of packaging; graphic design of logos; graphic design of promotional matter; none of the aforesaid relating to rail transport or the railway industry are dissimilar to the opponent’s goods.

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 similar are specialised goods and services, usually directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. The signs

ETEMPO	TEMPO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sole element ‘ETEMPO’ of the earlier mark is likely to be perceived by the relevant public as a juxtaposition of the letter ‘e’ and the word ‘tempo’. In the technical domains, such as those involving computer and software, and to which the opponent’s goods belong, the letter ‘e’ is used to refer to ‘electronic’ (e.g. of or concerned with electronics; involving or concerned with the representation, storage, or transmission of information by electronic systems). The component ‘TEMPO’ will be perceived by the public in the relevant territory as the word ‘tempo’ in the meaning of ‘degree of celerity in the execution of a musical composition; rhythm of an action especially of a novel, theatrical or cinematographic’(‘grado de celeridad en la ejecución de una composición musical’; ‘ritmo de una acción, especialmente la novelesca, teatral o cinematográfica’, information extracted from http://dle.rae.es/?id=ZR8KSNZ). It is, furthermore, not excluded that the relevant public could associate the component ‘TEMPO’ with the Spanish word ‘tiempo’ in the meaning of, inter alia, ‘period during which an action or process is taking place’ (‘período durante el que se desarrolla una acción o proceso’, information extracted from http://dictionary.reverso.net/spanish-definition/tiempo). It is noted that the perception of the earlier mark as the juxtaposition described above is further underlined by the evidence of proof of use already analysed above, showing the sign depicted as ‘eTEMPO’ or ‘eTempo’.

The letter ´E´ in the earlier mark will be associated with ´electronic’, as already specified above. Bearing in mind that the relevant goods are software programmes, which are provided and operated through electronic means and are also meant for electronic operation of information, this letter is considered non-distinctive for the relevant goods, as it refers to their subject matter, purpose or means of provision.

The contested sign is a word mark, which consists of the single element ‘TEMPO’. The latter will be perceived by the relevant public in the way already specified above.

The component/element ‘TEMPO’, present in both signs, will be understood in the meanings specified above, namely as in the word ‘tempo’ and/or as a reference to ‘tiempo’, the concepts of which were already specified. However, neither the word ‘tempo’ per se is used as a time measurement when it comes to software goods, nor it directly represents the Spanish word ‘tiempo’, but it is rather an allusion to it. Therefore, the element/component ‘TEMPO’, although it could allude to the purpose of the relevant goods and services (as to reflect time or to serve for the creation of a product reflecting time), is at worst allusive, if not distinctive, for the relevant goods and services.

Visually and aurally, the signs coincide in the sequence (and the sounds of) the letters ‘T-E-M-P-O’, forming the last five out of six letters in the earlier mark and the entire contested sign. The signs differ in the first letter (and sound) ‘E’ of the earlier mark, which has no counterpart in the contested sign and is non-distinctive for the relevant goods.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the concept of the words ‘tempo’/’tiempo´’, while the differing concept of the letter ‘E’ of the earlier mark is non-distinctive for the relevant goods, the signs are considered conceptually similar to a high degree, if not identical.

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. As it was explained above the letter ‘E’ is non-distinctive in regard to the relevant goods and the component ‘TEMPO’ could allude to the purpose of the relevant goods, as software goods meant to reflect time. However, neither the word ‘tempo’ per se is used as a time measurement when it comes to software goods, nor it directly represents the Spanish word ‘tiempo’, as already specified above. Therefore, the connection between any characteristics of the products and the actual mark is not direct and immediate and the earlier mark is at most allusive to a certain extent. Therefore, the distinctiveness of the earlier mark must be seen as average or slightly lower than average.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested services were found partly similar and partly dissimilar to the goods of the earlier mark. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

It is taken into account that, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Furthermore, the earlier mark is considered to enjoy an average or slightly lower than average degree of distinctiveness for the public in the relevant territory. It has been also established above that the signs are conceptually similar to a high degree (if not identical) and visually and aurally similar to a high degree. The marks contain the same sequence of letters ‘*TEMPO’, albeit with an extra first letter ‘E’ in the earlier mark, which letter however when it comes to the relevant goods is devoid of distinctiveness.

In the light of the foregoing, the degree of similarity between the marks is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods and services found to be similar originate from the same undertaking or economically linked undertakings, even when the degree of attention is higher than average.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No  2 852 933.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to goods of the earlier trade mark.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Natascha GALPERIN

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.