OPPOSITION No B 2 694 498
Smart Business Innovation, S.L., Avda. Corts Catalanes, 5, 08173 Sant Cugat Del Valles, Spain (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Awave AB, Sveavägen 151 1TR, 113 46 Stockholm, Sweden (applicant), represented by Ports Group Ab, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 694 498 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 15 069 065. The opposition is based on European Union trade mark registration No 14 447 528. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer programs for network management; Computer programs for network management; Computer programs for network management; Computer software applications, downloadable; Computer application software; Computer software for application and database integration; Electronic publications, downloadable; Computer software downloaded from the internet; Computer software downloadable from global computer information networks; Communication software; Recorded computer software; Desktop publishing software; Computer software; Computer telephony software; Communication software; Computer programs for network management; Industrial controls incorporating software; Computer software for processing market information; Data communications software; Computer programs for network management; Computer software for accessing information directories that may be downloaded from the global computer network.
Class 35: On-line advertising on a computer network; Business networking services; Preparing business reports; Drawing up of business statistical information; Establishing a network of business contacts (Service to assist in -); Providing information about commercial business and commercial information via the global computer network; Business information services provided online from a global computer network or the internet; Providing business information, also via internet, the cable network or other forms of data transfer; Provision of an on-line marketplace for buyers and sellers of goods and services; Promotion services; Sales promotion; Promotional marketing; Publicity and sales promotion services; Computerised business promotion; Business analysis; Business administration; Business planning services; Business information; Business organisation; Business research; Business management; Business supervision; Information in business matters; Compilation of business directories; Compilation of business directories; Compilation of directories for publication on the internet; Compilation of directories for publishing on global computer networks or the internet; Market research; Market survey analysis; Market reports and studies; Computerized market research services; Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services.
Class 38: Communication services over computer networks; Electronic network communications; Telecommunication services; Providing access to computer networks; Provision of wireless application protocol services including those utilising a secure communications channel; Telecommunication services; Communications via multinational telecommunication networks; Communication by electronic means.
Class 41: Providing on-line electronic publications, not downloadable; Education, entertainment and sports; Conferences, exhibitions and seminars; Arranging of lectures; Arranging of conferences; Arranging of conferences relating to business; Arranging of conferences relating to advertising; Arranging of conventions for training purposes; Arranging of conventions for business purposes; Arranging of demonstrations for training purposes; Conducting of instructional seminars; Organisation of meetings and conferences; Organisation of seminars and conferences; Arranging and conducting of symposiums; Planning of seminars for educational purposes; Consultancy services relating to training; Courses (Training -) relating to management; Training courses relating to computer software; Providing training courses on business management; Provision of training courses in personal development; Providing computer assisted courses of instruction; Conducting courses, seminars and workshops; Demonstration [for instructional purposes]; Education in the field of computing; Conducting training seminars for clients.
Class 42: Design and development of networks; Monitoring of network systems; Configuration of computer systems and networks; Rental of application software; Application service provider (ASP); Application service provider services; Advice and consultancy in relation to computer networking applications; Application service provider (ASP); Application service provider [ASP], namely, hosting computer software applications of others; Providing temporary use of non-downloadable computer programs; Providing temporary use of non-downloadable computer software for preparing shipping documents over computer networks, intranets and the internet; Creating, designing and maintaining web sites; Creating electronically stored web pages for online services and the internet; Computer software consultancy; Software engineering; Rental of software; Software as a service [SaaS]; Software customisation services; IT services; Design services; Web site design consultancy; Product development.
The contested goods and services are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carries; Recording discs; Compact discs, DVDs and other digital recording media; Computers; Computer software; Computer databases; Computer software for database management; Computer operating system software; Programs (Computer -) [downloadable software]; Hard software for computers; Computer software for authorising access to data bases; Computer hardware for telecommunications; Computer software downloaded from the internet; Computer software for creating searchable databases of information and data; Application software for cloud computing services; Computer application software; Servers for web hosting; Computer programs for using the internet and the worldwide web.
Class 35: Advertising; Business management; Business administration; Office functions; Marketing services; Online advertising; Consultancy and advisory services in the field of business strategy; Business assistance, management andadministrative services; Management assistance; outsourcing services business assistance; Systemization of information into computer databases; Consultancy relating to data processing; Business management consulting; Consultancy services regarding business strategies.
Class 38: Telecommunication services; Data communication services; Transmission and reception [transmission] of database information via the telecommunication network; Providing access to databases; Message sending; Email services; Telephone services; Providing access to a global computer network for the transfer and dissemination of information; Electronic transmission of messages, data and documents; Transmission of database information via telecommunications networks; Audiovisual communication services; Audiovisual transmission services; Transmission of data by audio-visual apparatus; Providing of access to telecommunication warehousing services.
Class 42: Design of computer databases; Development of data bases; Maintenance of data bases; Cloud computing; Development of computer software application solutions; Software design and development; Development of computer programs; Design, maintenance, development and updating of computer software; Development of computer software application solutions; Development of systems for the transmission of data; Computer software development for others; Creating electronically stored web pages for online services and the internet; Information technology [IT] consultancy; Information services relating to the development of computer systems; Consultancy relating to computer programming, computers and computer software; Design and development of systems for data input, output, processing, display and storage; Technological consultation services; Technological advisory services relating to computer programs; Server hosting; Hosting services and software as a service and rental of software; Hosting web sites; Computer website design; Programming of web pages; Consultancy with regard to webpage design; Website development services; Maintenance of websites; Web portal design; Design, creation and programming of web pages; Graphic design.
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.
- 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 assumed to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.
The degree of attention is higher than average due to the specific technical nature of the goods and services.
- The signs
| AWAVE | |
|
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 figurative mark contains a semi round shape fantasy device element and next to it word elements. The word WAVEE has no meaning for the relevant public and is, therefore, distinctive together with the device element.
The elements SMART COMMUNITY will be understood, by the English speaking public, as SMART meaning ‘someone who is clever’ and COMMUNITY meaning ‘a group of people who are similar in some way’ (both from Collins English Dictionary). The remaining public would not perceive any meaning in these words. The mark has no elements that are distinctive then other elements.
The element ‘SMART COMMUNITY’ in the earlier sign is the less eye-catching compared to other elements.
In the contested mark, the word AWAVE has no meaning for the relevant public and is, therefore, distinctive.
Visually, the signs coincide only in some letters, such as W, A, V, E. However, they differ in the device elements, the overall setup, in the entire word elements, colors, stylisation and the length therefore, of the signs. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).
Therefore, the signs are visually similar to 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 letters W, A, V, E, present identically in both signs, although these are pronounced differently depending on the letters preceding and following them, which are different in the marks. The pronunciation differs in the sound of the complete elements WAVEE SMART COMMUNITY and AWAVE of the marks.
Therefore, the signs are aurally similar to a low degree.
Conceptually, although, part of the public in the relevant territory will perceive the meaning of the elements SMART COMMUNITY of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the public that perceives no meaning at all in the signs, the conceptual comparison is neutral.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and 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.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods and services assumed to be identical are mainly specialised products and services, aimed at professionals and general public that pay closer attention to the goods and services due to their nature. The level of attention of the relevant public will be mostly higher than average.
The various elements in the marks and their meanings have been described previously. The signs are similar to the extent that they share the of individual letters W, A, V, E which are however hidden in the middle of the signs. However, the considerable differences between the signs caused by the additional and/or different device and verbal elements are particularly relevant when assessing the likelihood of confusion between them.
These differences create visual, aural and conceptual distance (for part of the public) between the signs at issue. The Opposition Division considers that, despite assumed identity of some of the goods and services at issue, even persons with only an average level of attention won’t confuse the marks.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. 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
| Francesca DINU | Erkki MÜNTER | Julie GOUTARD
|
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.