OPPOSITION No B 2 358 607

Union Technique de l'Automobile, du Motocycle et du Cycle, Autodrome de Linas Montlhery, 91311 Montlhery, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

ITK Engineering GmbH, Im Lerchenflug 27, 76773 Kuhardt, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 358 607 is upheld for all the contested goods and services, namely

Class 9:        Computer programs and software, in particular for operating testing and measurement apparatus.

Class 42:        Technical consultancy regarding the testing of products; Creating technical test reports.

2.        European Union trade mark application No 12 499 596 is rejected for all the contested goods and services. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 499 596 ‘TAC’, namely against some of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark application No 11 857 191 and French trade mark registration No 123 968 505 for the word mark ‘UTAC’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No  11 857 191.

1. The goods and services

The services on which the opposition is based are, inter alia, the following:

Class 42:        Quality control and audits; Technical inspections of vehicles; Tests and trials leading to the granting of a certificate in conformity with specified requirements vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing; Research, design and analysis of management systems, in particular management in the field of quality, the environment, production, health and safety in the workplace; Research, information, consultancy and design in the field of the evaluation of conformity to specified requirements (standards, specifications, frames of reference) in the field of vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing; Drafting of standards, specifications, frames of reference in the field of vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing; Technical inspection, monitoring and checking relating to compliance with standards, specifications and frames of reference; Technical project studies; Devising of technical analysis methods; Design (development) of computer programs (development) and databases relating to the evaluation of conformity, professional training, applicable tests, trials and regulations in the field of vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing; None of the aforesaid services relating to the field of wheelchairs or parts and fittings therefor.

The contested goods and services are the following:

Class 9:        Computer programs and software, in particular for operating testing and measurement apparatus.

Class 42:        Technical consultancy regarding the testing of products; Creating technical test reports.

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

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 design (development) of computer programs (development) as found in the opponent’s list of services in Class 42 is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

Computer programs and software are composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

Therefore, the contested computer programs and software, in particular for operating testing and measurement apparatus are closely linked to the opponent’s design (development) of computer programs (development) and databases relating to the evaluation of conformity, professional training, applicable tests, trials and regulations in the field of vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing; none of the aforesaid services relating to the field of wheelchairs or parts and fittings therefor. This is because manufacturers 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.

Contested services in Class 42

Consultancy is merely a generic term to describe the provision of information and expertise. The contested technical consultancy regarding the testing of products; creating technical test reports and the opponent’s tests and trials leading to the granting of a certificate in conformity with specified requirements vehicles, parts or fittings of vehicles, parts or fittings of apparatus for locomotion by land, air or water, protective helmets, protective helmets for sport, riding helmets, protection devices for personal use against accidents, glazing are both concerned with ‘testing’ in general, this means that they have a similar purpose, nature and possibly also method of use. They would be expected to be provided by the same service providers and, contrary to the applicant’s observations, the services are thus highly similar. Moreover, from the specification technical consultancy regarding the testing of products; creating technical test report, it cannot be deduced that these services could never be rendered in the vehicle industry sector. Thus, the professional public, to whom both marks are addressed, could be the same.

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 (to varying degrees) 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, it is considered that the degree of attention may also vary from average to high.

3. The signs

UTAC	TAC
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word ‘TAC’ is not meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The elements ‘UTAC’ and ‘TAC’ of the earlier mark and the contested sign, respectively, have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence of letters and sounds ‘TAC’. The difference between the signs is confined to the additional first letter ‘U’ only contained in the earlier sign.

The word ‘TAC’ constitutes the entire contested sign and the last three letters out of four of the earlier trade mark. Therefore, the marks are visually and aurally similar to a higher than average degree.

Conceptually, 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the goods and services at issue are similar (to varying degrees) and the degree of attention of the relevant public may vary from average to high.

The earlier mark has a normal degree of distinctiveness. Despite the slight difference between the signs, as stated above in section c) of this decision and contrary to the applicant’s argument, the signs are visually and aurally similar to an above average degree overall and there is no conceptual aspect that could help consumers to differentiate the signs.

Contrary to what the applicant claims, the fact that the signs differ by the first letter of the earlier trade mark, is not such as to reduce the visual and aural similarity resulting from the group of three letters ‘tac’. Moreover, there are not elements which make a conceptual distinction between the conflicting signs (25/10/2006, T-13/05, oda, EU:T:2006:335). Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention, as in this case for part of the relevant customers, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Consequently, the relevant public, when encountering the signs in relation to the goods and services at issue, is likely to confuse the trade marks or make a connection between the conflicting signs and assume that the goods and services come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 857 191. It follows that the contested trade mark must be rejected for all the contested goods and services. As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Consequently, it is not necessary to enter into the issue of the substantiation of the earlier French trade mark No 123 968 505.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Carlos MATEO PÉREZ

Richard BIANCHI

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.