OPPOSITION No B 2 745 621

Imersivo S.L., Plaza República Argentina, 3, 28002 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Imersia Limited, P.O. Box 5274, Wellesley Street, Auckland 1141, New Zealand (holder), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 745 621 is partially upheld, namely for the following contested goods and services:

Class 9:        Cloud-support software used with artificial intelligence augmented or virtual reality technology; software used in connection with smart phones and other wireless apparatus; electronic apparatus namely headsets incorporating embedded software.

Class 42:        Design services, being hardware and software design.

2.        International registration No 1 271 183 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 271 183, namely against all the goods and services in Classes 9 and 42. The opposition is based on Spanish trade mark registration No 3 099 888. 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 on which the opposition is based are the following:

Class 9:        Computer programmes [programs], recorded; Electronically downloadable computer software programs; Computer operating programs, recorded; Electronic publications, downloadable.

The contested goods and services are the following:

Class 9:        Cloud-support software used with artificial intelligence augmented or virtual reality technology; software used in connection with smart phones and other wireless apparatus; electronic apparatus namely headsets incorporating embedded software.

Class 42:        Research and design services, being hardware and software design.

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 terms ‘namely’ and ‘being’, used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, are exclusive and restrict 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 opponent’s computer programmes [programs], recorded include specialised computer software and programs in a recorded format, which are used for many purposes, including virtual reality, augmented artificial intelligence or software in connection with wireless apparatus and headsets. Therefore, the contested cloud-support software used with artificial intelligence augmented or virtual reality technology; software used in connection with smart phones and other wireless apparatus overlap with the opponent’s computer programmes [programs], recorded. Therefore, they are identical.

The contested electronic apparatus namely headsets incorporating embedded software include virtual reality headsets, head-mounted displays, etc. Although, according to the specification, the headsets function using integrated software, it is common for some sort of software, sold as a separate product, to be required to increase their functionalities and it may be indispensable for their use. Therefore, the contested goods are similar to the opponent’s computer programmes [programs], recorded, as they have the same distribution channels, target the same relevant public and are complementary.

Contested services in Class 42

The contested design services, being hardware and software design refer to the design and development of components that work together in a computer, which include the hardware devices that are the physical components of the system and the computer programs that perform a desired sequence of operations. The opponent’s computer programmes [programs], recorded in Class 9 are composed of programs, routines and symbolic languages that control the functioning of the hardware and direct its operation. Manufacturers of such software products also commonly provide software- and hardware-related services. Moreover, IT companies commonly provide consultations and information, as well as raising awareness of their goods and services. Although the nature of the goods and services is not the same, the relevant public, usual producers/providers and distribution channels of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, the contested design services, being hardware and software design are similar to the opponent’s computer programmes [programs], recorded.

By their nature, goods are generally different from services. The contested research services consist essentially of research services that contribute to the generation, dissemination and application of scientific and technical knowledge. The opponent’s goods in Class 9 are dissimilar to the contested research services, since they do not have the same nature, purpose, method of use or usual origin. They are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. As the degree of specialisation of the goods and services, as well as their cost, may vary significantly (from low for software used with smartphones, to high for hardware and software design), it is considered that the degree of attention may also vary from average to high.

3. The signs

	IMERSIA
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 earlier mark is a figurative mark consisting of the stylised word ‘imersivo’ on a grey background. The contested sign is the word mark ‘IMERSIA’.

For a part of the relevant public, which includes virtual reality enthusiasts and specialists who have sufficient knowledge and expertise, the words ‘imersivo’ and ‘IMERSIA’ will allude to the concept of immersive technology (‘tecnología inmersiva’ in Spanish), which blurs the line between the physical world and the digital or simulated world, thereby creating a sense of immersion. For the remaining part of the public, the words are meaningless.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the marks are meaningful, resulting in conceptual similarity. The relevant goods and services are directly or potentially intended for experiencing immersive virtual reality or for a closely related purpose, for example the development and creation of virtual reality solutions. Since both words are equally weak, the marks are conceptually similar to an average degree.

As regards the dominance of the elements of the signs the verbal element of the earlier mark is the dominant element, as it is the most eye-catching. The grey background is a basic shape that is commonly used and is purely decorative. Consequently, it is considered that this element is non-distinctive and has a very limited impact, if any. The contested sign is a word mark and, as such, lacks dominant elements.

Visually, the signs coincide in the string of letters ‘IMERSI*’. They differ in the endings of their verbal elements, ‘VO’ in the earlier mark and ‘A’ in the contested sign, and in the grey background. The fact that the earlier mark is figurative does not have an impact on the public’s perception, as the typeface in which it is depicted is fairly standard and, as mentioned above, the grey background is purely decorative.

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, the fact that the coinciding letters are at the beginnings of the signs is particularly relevant.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs have in common the sound of the letter sequence ‘IMERSI*’ and differ in the pronunciation of their endings, ‘VO’ in the earlier mark and ‘A’ in the contested sign. Therefore, the signs are aurally similar to an average 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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods, and the public’s degree of attention varies from average to high. The signs in conflict are visually, aurally and conceptually similar to an average degree.

The earlier mark is weak, which allows it a limited scope of protection. However, the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a sufficient degree of similarity between the signs and between the goods or services covered.

Account must also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). This is especially relevant in the present case, where the signs are similar on account of the letter sequence ‘IMERSI*’, with the main difference found in the endings of the words, namely ‘VO’ in the earlier mark and ‘A’ in the contested sign.

In an overall assessment of the relevant factors of the case, it is concluded that the differences identified between the signs are clearly insufficient to enable the relevant public, including when the degree of attention is enhanced, to safely distinguish between the signs. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for which the marks are meaningful and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 099 888.

For the sake of completeness, it must be noted that there is also a likelihood of confusion for the remaining part of the public, which does not understand the meaning of the words ‘imersivo’ and ‘IMERSIA’. Despite the lack of similarity on the conceptual level, similarity to at least an average degree in the remaining aspects (visual and aural) is present and the distinctiveness of the earlier mark in this scenario is normal due to the lack of any conceptual link between the earlier mark and the goods and services at issue.

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 services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

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

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Vita VORONECKAITE

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.