OPPOSITION No B 2 676 271

L’Orange GmbH, Porschestraße 30, 70435 Stuttgart, Germany (opponent), represented by Höcker Rechtsanwälte, Friesenplatz 1, 50672 Köln, Germany (professional representative)

a g a i n s t

Filo, Via Giovanni Giolitti 34, 00185 Roma, Italy (applicant), represented by Cristina Bellomunno, Piazza Pio XI 1, 20123 Milano, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 676 271 is partially upheld, namely for the following contested goods and services:

Class 9:        Computer hardware; computer software programs, other than software for type (numerals and letters) and software for creating, uploading, downloading, use and display of type (numerals and letters) and other than software for controlling and regulating fuel injection systems; computer chips; computer memory devices; computer memory devices; intercommunication apparatus; apparatus for the transmission of data; signal processing apparatus; digital signal processing apparatus; signal transmission apparatus; apparatus for the transmission of images; apparatus for the transmission of sound; communications processing computer software; geographical positioning software.

Class 42:        Computer programming, other than computer programming of software for controlling and regulating fuel injection systems; computer programming, other than computer programming of software for controlling and regulating fuel injection systems; updating of computer programs, other than updatings of software for controlling and regulating fuel injection systems; writing of computer programs, other than writing of software for controlling and regulating fuel injection systems; computer software design, other than computer design of software for controlling and regulating fuel injection systems; development of computer programs, other than development of software for controlling and regulating fuel injection systems; modifying of computer programs, other than modifying software for controlling and regulating fuel injection systems; installing computer programs, other than installing software for controlling and regulating fuel injection systems; advisory services relating to computer programming; maintenance of computer programs, other than maintenance of software for controlling and regulating fuel injection systems; editing of computer programs, other than editing software for controlling and regulating fuel injection systems; computer programming for the internet, other than computer programming of software internet for controlling and regulating fuel injection systems; maintenance of software, other than maintenance of software for controlling and regulating fuel injection systems; scientific computer programming services; professional advisory services relating to computer software; design services for computer programs, other than design of software for controlling and regulating fuel injection systems; computer programming and software design, other than computer programming and design of software for controlling and regulating fuel injection systems; installation and maintenance of computer programs, other than installation and maintenance of software for controlling and regulating fuel injection systems; software design and development, other than design and development of software for controlling and regulating fuel injection systems; services for the writing of computer software, other than writing of software for controlling and regulating fuel injection systems; advisory services relating to computer programming; consultancy services relating to computer programming; creation, updating and adapting of computer programs, other than creation, updating and adapting software for controlling and regulating fuel injection systems; advisory services relating to computer programming; development of computer software for use with computer-controlled switching systems; computer programming for data processing and communication systems; computer software design, other than computer software design of software for controlling and regulating fuel injection systems; programming of software for information platforms on the internet; installation, maintenance and updating of database software, other than installation, maintenance and updating of database software for controlling and regulating fuel injection systems; development and maintenance of computer database software, other than development and maintenance of computer database software for controlling and regulating fuel injection systems; development of software for multimedia data storing and recalling; design of software for multimedia data storing and recalling; services for the design of electronic data processing software, other than services for the design of software for controlling and regulating fuel injection systems; IT services, in particular providing of temporary use of non-downloadable online software for geolocation; computer services, in particular providing of temporary use of non-downloadable online software for creating online user communities for providing assistance to users, forming virtual communities and social networking.

2.        European Union trade mark application No 14 862 973 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 14 862 973, namely against all the goods in Class 9 and some of the services in Class 42. The opposition is based on European Union trade mark registration No 10 875 854. 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 7:        Common rail systems, namely systems for high-pressure fuel injection; pressure accumulator injection systems for diesel and heavy-oil engines; injectors for engines, consisting of nozzle needles and nozzle needle housings; injection nozzles for pressure accumulator injection systems; fule injection systems and parts therefor; fuel injection systems for dual-fuel engines and gas engines; injection systems for feeding water to engines; injection systems for exhaust gas after-treatment; injectors for motors; Injectors for fuel injection installations and exhaust gas after-treatment systems for engines; injection pumps for conventional injection systems of engines, conventional injection systems consisting of pump-line-nozzles; filters for fuel injection installations and exhaust gas after-treatment systems; injection nozzle holders, being parts of motors, engines or machines; pumps and parts therefor, in particular high-pressure pumps and parts therefor, fule injection systems and parts therefor; exhaust gas after-treatment systems and parts therefor; pumps and valves for exhaust gas after-treatment systems, being parts of motors, engines or machines; high-pressure accumulators for fuel injection installations; mixers for fuel injection installations; mixers for producing water-fuel emulsions for engines; control apparatus for internal combustion engines and fuel injection installations; hydraulic controllers for internal combustion engines and fuel injection installations; seals for fuel injection systems; valves for injecting fuel into gas engines; valves for fuel injection installations, in particular safety valves, circulation valves, constant flow regulators, control valves, pilot valves; assembly machines for internal combustion engines and fuel injection systems.

Class 9:        Testing and measuring apparatus for internal combustion engines and fuel injection systems; software for controlling and regulating fuel injection systems.

The contested goods and services, after the applicant’s limitation of 07/06/2016, are the following:

Class 9:        Vehicle tracking apparatus; navigation, guidance, tracking, targeting and map making devices; computer hardware; laptop computers; computer software programs, other than software for type (numerals and letters) and software for creating, uploading, downloading, use and display of type (numerals and letters) and other than software for controlling and regulating fuel injection systems; computer chips; computer memory devices; computer memory devices; intercommunication apparatus; apparatus for the transmission of data; position fixing apparatus; sensors for determining position; electronic global positioning systems; signal processing apparatus; digital signal processing apparatus; signal transmission apparatus; apparatus for the transmission of images; apparatus for the transmission of sound; communications processing computer software; geographical positioning software; electronic devices used to locate lost articles employing the global positioning system or cellular communication networks; software for creating online user communities for providing assistance to users, forming virtual communities and social networking.

Class 42:        Computer programming, other than computer programming of software for controlling and regulating fuel injection systems; computer programming, other than computer programming of software for controlling and regulating fuel injection systems; updating of computer programs, other than updatings of software for controlling and regulating fuel injection systems; writing of computer programs, other than writing of software for controlling and regulating fuel injection systems; computer software design, other than computer design of software for controlling and regulating fuel injection systems; development of computer programs, other than development of software for controlling and regulating fuel injection systems; modifying of computer programs, other than modifying software for controlling and regulating fuel injection systems; installing computer programs, other than installing software for controlling and regulating fuel injection systems; advisory services relating to computer programming; maintenance of computer programs, other than maintenance of software for controlling and regulating fuel injection systems; editing of computer programs, other than editing software for controlling and regulating fuel injection systems; computer programming for the internet, other than computer programming of software internet for controlling and regulating fuel injection systems; maintenance of software, other than maintenance of software for controlling and regulating fuel injection systems; scientific computer programming services; professional advisory services relating to computer software; design services for computer programs, other than design of software for controlling and regulating fuel injection systems; computer programming and software design, other than computer programming and design of software for controlling and regulating fuel injection systems; installation and maintenance of computer programs, other than installation and maintenance of software for controlling and regulating fuel injection systems; software design and development, other than design and development of software for controlling and regulating fuel injection systems; services for the writing of computer software, other than writing of software for controlling and regulating fuel injection systems; advisory services relating to computer programming; consultancy services relating to computer programming; creation, updating and adapting of computer programs, other than creation, updating and adapting software for controlling and regulating fuel injection systems; advisory services relating to computer programming; development of computer software for use with computer-controlled switching systems; computer programming for data processing and communication systems; computer software design, other than computer software design of software for controlling and regulating fuel injection systems; programming of software for information platforms on the internet; installation, maintenance and updating of database software, other than installation, maintenance and updating of database software for controlling and regulating fuel injection systems; development and maintenance of computer database software, other than development and maintenance of computer database software for controlling and regulating fuel injection systems; development of software for multimedia data storing and recalling; design of software for multimedia data storing and recalling; services for the design of electronic data processing software, other than services for the design of software for controlling and regulating fuel injection systems; programming of software for internet portals, chatrooms, chat lines and internet forums; IT services, in particular providing of temporary use of non-downloadable online software for geolocation; computer services, in particular providing of temporary use of non-downloadable online software for creating online user communities for providing assistance to users, forming virtual communities and social networking.

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 hardware; computer chips; computer memory devices; computer memory devices are similar to the opponent’s software for controlling and regulating fuel injection systems. Hardware devices are the physical components of computers. The hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software, and they have the same distribution channels and target the same professional public as computer software companies.

The above reasoning does not apply to the contested laptop computers, which are dissimilar to the opponent’s software for controlling and regulating fuel injection systems, since the opponent’s goods have a very specialised public and very specialised distribution channels and the contested goods are portable personal computers for the general public. These contested goods are also dissimilar to the remaining opponent’s goods, which are specialised.

The contested computer software programs, other than software for type (numerals and letters) and software for creating, uploading, downloading, use and display of type (numerals and letters) and other than software for controlling and regulating fuel injection systems; communications processing computer software; geographical positioning software are similar to the opponent’s software for controlling and regulating fuel injection systems, since, despite the limitation on the contested goods, they are still broadly formulated and could have applications in fields closely related to that of the opponent’s goods. They can have the same producers, end users and distribution channels.

The contested intercommunication apparatus; apparatus for the transmission of data; signal processing apparatus; digital signal processing apparatus; signal transmission apparatus; apparatus for the transmission of images; apparatus for the transmission of sound are similar to the opponent’s software for controlling and regulating fuel injection systems, as they have, to a certain degree, similar purposes (the manipulation of data), similar distribution channels and the same end users. Furthermore, they may be complementary in that the apparatus needs software and vice versa.

The contested software for creating online user communities for providing assistance to users, forming virtual communities and social networking is dissimilar to the opponent’s software for controlling and regulating fuel injection systems. These software products are for specific and very distinct purposes. In general, there are many types of software in the market and, although software by nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that its specific purpose is always the same. This implies that very specific software could even be dissimilar to another type of software. The field of application of software for creating online user communities for providing assistance to users, forming virtual communities and social networking is not the same as that of software for controlling and regulating fuel injection systems. Due to these significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. These contested goods are also dissimilar to the remaining opponent’s goods, as those goods are even more different.

The contested vehicle tracking apparatus; navigation, guidance, tracking, targeting and map making devices; position fixing apparatus; sensors for determining position; electronic global positioning systems; electronic devices used to locate lost articles employing the global positioning system or cellular communication networks are various kinds of apparatus and instruments with very specific uses in different fields of science, cinematography and photography, navigation, lifesaving, etc. These goods have different natures and methods of use from the opponent’s goods in Classes 7 and 9. Furthermore, they will differ in their relevant publics and distribution channels. Therefore, they are considered dissimilar.

Contested services in Class 42

The contested computer programming, other than computer programming of software for controlling and regulating fuel injection systems; computer programming, other than computer programming of software for controlling and regulating fuel injection systems; updating of computer programs, other than updatings of software for controlling and regulating fuel injection systems; writing of computer programs, other than writing of software for controlling and regulating fuel injection systems; computer software design, other than computer design of software for controlling and regulating fuel injection systems; development of computer programs, other than development of software for controlling and regulating fuel injection systems; modifying of computer programs, other than modifying software for controlling and regulating fuel injection systems; installing computer programs, other than installing software for controlling and regulating fuel injection systems; advisory services relating to computer programming; maintenance of computer programs, other than maintenance of software for controlling and regulating fuel injection systems; editing of computer programs, other than editing software for controlling and regulating fuel injection systems; computer programming for the internet, other than computer programming of software internet for controlling and regulating fuel injection systems; maintenance of software, other than maintenance of software for controlling and regulating fuel injection systems; scientific computer programming services; professional advisory services relating to computer software; design services for computer programs, other than design of software for controlling and regulating fuel injection systems; computer programming and software design, other than computer programming and design of software for controlling and regulating fuel injection systems; installation and maintenance of computer programs, other than installation and maintenance of software for controlling and regulating fuel injection systems; software design and development, other than design and development of software for controlling and regulating fuel injection systems; services for the writing of computer software, other than writing of software for controlling and regulating fuel injection systems; advisory services relating to computer programming; consultancy services relating to computer programming; creation, updating and adapting of computer programs, other than creation, updating and adapting software for controlling and regulating fuel injection systems; advisory services relating to computer programming; development of computer software for use with computer-controlled switching systems; computer programming for data processing and communication systems; computer software design, other than computer software design of software for controlling and regulating fuel injection systems; programming of software for information platforms on the internet; installation, maintenance and updating of database software, other than installation, maintenance and updating of database software for controlling and regulating fuel injection systems; development and maintenance of computer database software, other than development and maintenance of computer database software for controlling and regulating fuel injection systems; development of software for multimedia data storing and recalling; design of software for multimedia data storing and recalling; services for the design of electronic data processing software, other than services for the design of software for controlling and regulating fuel injection systems refer to the design and development of components that work together in computer and related advisory services, 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 contested goods are similar to the opponent’s software for controlling and regulating fuel injection systems, since, despite the limitation on the contested services, they relate to the development of hardware and software that could have an application in fields closely related to that of the opponent’s goods. These goods and services can have the same producers/providers and end users. Furthermore, they are complementary.

The above reasoning does not apply to the contested programming of software for internet portals, chatrooms, chat lines and internet forums, which are dissimilar to the opponent’s software for controlling and regulating fuel injection systems. The field of application of the contested programming of software for internet portals, chatrooms, chat lines and internet forums is not the same as or related to that of software for controlling and regulating fuel injection systems. Due to these significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. These contested services are also dissimilar to the remaining opponent’s goods.

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 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).

The contested IT services, in particular providing of temporary use of non-downloadable online software for geolocation; computer services, in particular providing of temporary use of non-downloadable online software for creating online user communities for providing assistance to users, forming virtual communities and social networking are similar to the opponent’s software for controlling and regulating fuel injection systems, since IT services include the design and development of software. Therefore, they can have the same producers/providers and end users. Furthermore, they are complementary.

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 of the earlier mark target a professional public exclusively and the contested goods target the general and the professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

The public’s degree of attentiveness may vary from average to high (e.g. for development of software for multimedia data storing and recalling), depending on the price and/or specialised nature of the goods and services.

3. The signs

L’O
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 earlier mark is the word mark ‘L’O’. It is important to note that, in the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or in a combination thereof. The earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘lo’ in black letters in the middle of a white square with curved corners on a black rectangular background. Given the merely decorative nature and commonplace character of these figurative elements, as they form a simple black and white frame, it is considered that they have almost no capacity to indicate commercial origin and therefore the distinctiveness of these figurative elements is weak. Therefore, the verbal element is more distinctive than the figurative element.

Neither of the signs has any element that could be considered clearly more visually dominant than other elements.

Visually, the signs coincide in the letters ‘L’ and ‘O’, which are the only letters in the signs and are in the same order. The differences between the conflicting signs result from the presence of the apostrophe between the two letters in the earlier mark and from the stylisation of the verbal element and in the white square with curved corners on a black rectangular background in the contested sign. In that context, it should be pointed out that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters ‘LO’, present identically in both signs. Contrary to the applicant’s argument, the apostrophe in the earlier mark will not result in a significant audible difference. Therefore, the signs are aurally identical.

Conceptually, the applicant stated in its observations that the letters ‘lo’ of the contested sign are the second and last syllable of the word ‘filo’, which corresponds to the applicant’s name (Filo S.R.L.) and to the word element of EUTM No 14 875 775 filed by the applicant for the same goods and services. However, this statement must be set aside, since the comparison of the signs has to be made with European Union trade mark application No 14 862 973 as it is registered.

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

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The 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).

The goods and services in dispute are partly identical, partly similar and partly dissimilar. The relevant public for assessing likelihood of confusion are professional customers with specific knowledge or expertise, whose degree of attention varies from average to higher than average. Furthermore, the earlier mark has a normal degree of distinctiveness, and the signs are visually similar to an average degree and aurally identical.

The differences between the signs, consisting in the figurative elements and stylisation of the contested sign and the additional apostrophe in the earlier mark, are not sufficient to counteract their similarities. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above and taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the public, even for those goods and services for which there is a heightened degree of attention, and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 875 854.

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

Steve HAUSER

Alexandra APOSTOLAKIS

Boyana NAYDENOVA

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.