OPPOSITION No B 2 706 417

Le Ltd., A Cayman Islands Company, Sertus Chambers, P.O. Box 2547, Cassia Court, Camana Bay, Grand Cayman, Camana Bay, Cayman Islands (opponent), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91ª, 03540 Alicante, Spain (professional representative)

a g a i n s t

LT Calcoli S.r.l., Via Carlo Baslini 13, 23807 Merate, Italy (applicant), represented by Studio Karaghiosoff e Frizzi s.r.l., Via Baracca 1r 4 piano, 17100 Savona, Italy (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 417 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 052 624. The opposition is based on European Union trade mark registration No 14 965 636. 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 service

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

Class 9:        Smartphones; Encoded magnetic cards; Computer programmes [programs], recorded; Computer operating programs, recorded; Computer software applications, downloadable; Television apparatus; Batteries, electric; Headphones; Compact disc; Navigational instruments.

Class 38:        Television broadcasting; Wireless broadcasting; Message sending; Computer aided transmission of messages and images; Communications by fiber [fibre] optic networks; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; Providing online forums; Providing access to databases; Video broadcasting services via the Internet.

Class 42:        Technical research; Off-site data backup; Electronic data storage; Software as a service [SaaS]; Computer software design; Rental of computer software; Conversion of data or documents from physical to electronic media; Hosting computer sites [web sites]; Providing search engines for the internet; Cloud computing.

The contested goods and services are the following:

Class 9:        Application software for cloud computing services; Data communications hardware; Computer hardware; Computer software programs for spreadsheet management; Computer databases; Encoded programs; Data processing programs; Programs for computers; Computer software for database management; Cards encoded to access computer software; Computer application software; Compiler software; Computer programmes for data processing; Computer software for encryption; Application software; Calculation models; Apparatus for recordings, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; DVDs and other digital recording media; None of the aforesaid goods being used in the lighting industry. All of the aforesaid goods relating to Electromagnetics, Thermo-structural, CFD (Fluidodynamics), Cinematic and Dynamic problems, Nuclear and Mechanics.

Class 41:        Training in the development of software systems; Training services in the field of computer software development; Arranging of lectures; Providing of training; None of the aforesaid services being provided for the lighting industry. All of the aforesaid services relating to Electromagnetics, Thermo-structural, CFD (Fluidodynamics), Cinematic and Dynamic problems, Nuclear and Mechanics.

Class 42:        Software design and development; Updating computer software; Research relating to the development of computer programs and software; Cloud computing; Consultancy relating to the design and development of computer software programs; Creation of computer programmes for data processing; Scientific and technological services and research and design relating thereto; None of the aforesaid services being provided for the lighting industry. All of the aforesaid services relating to Electromagnetics, Thermo-structural, CFD (Fluidodynamics), Cinematic and Dynamic problems, Nuclear and Mechanics.

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.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical are directed at business customers with specific professional knowledge or expertise. This is due to the limitation the applicant made, limiting the goods and services to those relating to electromagnetics, thermo-structural, CFD (Fluidodynamics), cinematic and dynamic problems, nuclear and mechanics which are highly special goods and services. The degree of attention will be high since the professional customers will have special knowledge of the goods and services in question.

3. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative sign formed by the depiction of an ‘L-shaped’ geometrical figure combined with two horizontal lines, preceding the verbal element ‘LeCloud’.

The contested sign is a figurative mark containing a cloudlike figure. Within the cloudlike figure there is a square that is divided diagonally with one part black and the other white, preceding  the verbal element ‘LTCloud’.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

With respect to the present case, it can be reasonably assumed that the relevant public will readily discern the word ‘Cloud’ in both signs. This is because this element is visually distinguished from the remaining verbal elements of the signs by the use of title case. Furthermore, ‘Cloud’ is an English term used nowadays in the computer, IT and telecommunication fields to designate a public or semi-public space on transmission lines in telecommunications (for the transmission of all kinds of data) on the internet. Irrespective of the native language spoken by consumers, this concept is understood by the relevant public throughout the European Union targeted by these services, as it is frequently used in their field. Account must also be taken of the fact that the relevant public in the present case is presumed to be familiar with English in connection with software, training concerning software, IT, science and technology.

In view of the above, the element ‘Cloud’ is considered descriptive of the goods and services in question, since it only indicates that they are provided for or provided via cloud technology (earlier and contested goods in Class 9 and contested services in Class 41) or are focused on the development, research and design of this technology (earlier and contested services in Class 42) as well as for the earlier services in Class 38. Therefore, it is non-distinctive.

The element ‘LE’ of the earlier mark will be seen by the French-speaking part of the relevant public as a common French male article, comparable to the English word ‘the’, qualifying the following word cloud. For this part of the public it will be of low distinctiveness. For the rest of the public, that does not understand French, this element is meaningless and, therefore, distinctive.

The element ‘LT’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive

The figurative element of the contested sign, as described above, only reinforces the idea evoked by the word ‘Cloud’ and is, therefore, considered weak for the relevant services.

The ‘L’ shaped geometrical figure and two horizontal lines of the earlier mark has no meaning in relation to the goods and services and question and is also not purely decorative in nature, Therefore, it is distinctive. The two coloured square of the contested sign is a simple geometric figure and therefore of low distinctiveness.

Furthermore, it is established practice that, when signs consist of both verbal and figurative components (as the contested sign does), 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).

In summary, the word ‘Cloud’, which the signs have in common, is descriptive and a non-distinctive element of the signs, the figurative element of the contested sign is less distinctive than its element ‘LT’ and the figurative element of the earlier mark has normal distinctiveness as well as the element ‘LE’ in the earlier sign for non-French speakers. But the element ‘LE’ has lesser distinctiveness for French speakers as they will see ‘LeCloud’ as a whole, for them only the figurative part of the earlier sign will be distinctive.

The verbal element, ‘LTCloud’, of the contested sign overshadows all the other elements within the sign by virtue of its central position and size. Consequently, it is the visually dominant elements of the sign.

Visually, the signs coincide in the word ‘Cloud’, which was found to be a descriptive element, for the reasons explained above.

However, the signs differ in the remaining words/letters, namely ‘Le’ in the earlier mark and ‘LT’ in the contested sign.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Although the signs are also visually differentiated by the figurative element of both marks, these differences have a low impact on the assessment of the likelihood of confusion, for the reasons explained above.

In view of the above, considering the impact of the descriptive word ‘Cloud’, the signs are visually similar to only a low degree.

Aurally irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘Cloud’, which was found to be a descriptive element for the reasons explained above.

However, the signs differ in the sound of the remaining words/letters, namely ‘Le’ of the earlier mark and ‘LT’ of the contested sign. Furthermore, ‘Le’ of the earlier mark will be recognised as a common French word by part of the public and thus pronounced together with the word ‘Cloud’, while ‘LT’ for some will be seen as an abbreviation but for others will have no meaning. This means that the signs will have different intonations.

Therefore, considering the impact of the descriptive word ‘Cloud’, the signs are aurally similar only to a low degree.

Conceptually, reference is made to the meanings of the signs and their individual elements given above.

As both signs will be associated with a concept that is descriptive in the context of the relevant goods and services, the signs are conceptually not similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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).

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.

As concluded above, the goods and services in question are assumed to be identical, the relevant public consists of professionals, the degree of attention is high and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant services.

The conflicting signs are similar to a low degree visually and aurally, and conceptual not similar, given that the commonalities result mainly from the word ‘Cloud’, which is descriptive and non-distinctive in the context of the services in question, as explained in detail above in section c) of this decision. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22).

Contrary to the opponent’s opinion the Opposition Division finds that although the differences between the signs are not particularly striking, they are still readily perceptible and are sufficient to enable the relevant public, since they have a high degree of attention, to safely distinguish between them. When encountering the conflicting signs, the relevant public will pay very little attention, if any, to the descriptive word ‘Cloud’ present in both signs and will mentally register the differences, not only those found at the beginnings of the signs (‘Le’ and ‘LT’) which are short verbal elements easily distinguishable from each other, but also the figurative elements of both signs. All the above substantially reduces the likelihood of confusion between the conflicting signs to the extent that it can be safely ruled out, despite the identity between the goods and services at issue.

Consequently, it is concluded that the professional consumer, who, for the purposes of the assessment of likelihood of confusion, is considered to have a high awareness, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

Considering all the above, there is no likelihood of confusion (including likelihood of association) on the part of the public in the relevant territory. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tobias KLEE

Magnus ABRAMSSON

Martin EBERL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.