OPPOSITION No B 2 528 431

Vinzeo Technologies S.A.U., Elcano, 9 – 5º pta., 48008 Bilbao, Spain (opponent), represented by Disain IP, Avda. La Goleta, 17, Esc. 2, 2º C, 03540 Alicante, Spain (professional representative)

a g a i n s t

BeCloud Solutions Ltd, Carpenter Court, Maple Road, Bramhall, Stockport SK7 2DH, United Kingdom (applicant), represented by Botti & Ferrari S.R.L., Via Montebello, 2, 40121 Bologna, Italy (professional representative).

On 15/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 528 431 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 715 859. The opposition is based on European Union trade mark registration No 10 273 225. 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 services

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

Class 38:        Telecommunications.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The contested services are the following:

Class 38:        Telecommunications.

Class 42:        Scientific and technological services and research and design relating thereto; services in the field of hardware and software.

Contested services in Class 38

The contested telecommunications are contained in the list of services of the earlier trade mark. Therefore, these services are identical.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto are contained in the list of services of the earlier trade mark. Therefore, these services are identical.

The contested services in the field of hardware and software include, as a broader category, the opponent’s design and development of computer hardware and software in Class 42. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 services found to be identical are directed at the public at large and professionals with specific knowledge or expertise, for example in the fields of telecommunications, IT, science and technology.

The degree of attention of the average consumer may vary from average to high, depending on the technical level of the services, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

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).

The signs under comparison are figurative marks.

The earlier mark is composed of the verbal elements ‘ViCloud’ and ‘by vinzeo’ written over two lines in a slightly stylised typeface. The elements ‘Cloud’ and ‘vinzeo’ are in blue and the elements ‘Vi’ and ‘by’ are in dark grey.

The contested sign comprises a verbal element that can be read as either ‘BeCloud’ or ‘3eCloud’. This element is depicted in a slightly stylised black typeface; the stylisation mainly affects its first letter/number, ‘B’/‘3’, and last letter, ‘d’. Above the verbal element is a curvy figurative element in grey, which may resemble a cloud.

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 and in the earlier mark, it is also in a different colour. Furthermore, ‘Cloud’ is an English term used nowadays in the 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 in 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 telecommunication services, IT, science and technology.

In view of the above, the element ‘Cloud’ is considered descriptive of the services in question, since it only indicates that they are provided via cloud technology (conflicting services in Class 38) or are focused on the development, research and design of this technology (conflicting services in Class 42). Therefore, the impact of this element on the perception of the relevant public is very limited.

As regards the remaining verbal elements of the signs, ‘Vi’ and ‘by vinzeo’ of the earlier mark and ‘Be’/‘3e’ of the contested sign, some of them may have a meaning in certain parts of the relevant territory. For example, the word ‘Vi’ means ‘(I) saw’ in Spanish, the word ‘by’ means ‘would’ in Slovak and is a preposition in English and the word ‘Be’ means ‘exist, occur, take place, etc.’ in English. In any case, none of these words is descriptive, allusive or otherwise weak for the relevant services. Therefore, they are all distinctive to an average degree.

The word ‘vinzeo’ of the earlier mark is meaningless in the relevant territory, and in connection with the element ‘by’ it will be understood as referring to the commercial origin of the relevant services, as correctly pointed out by the opponent. However, contrary to the opponent’s opinion, the Opposition Division finds that this association does not render the element weak, but rather helps consumers to identify the services for which the earlier mark is registered as coming from a particular undertaking (the opponent), and thus to distinguish those services from those of other undertakings. Consequently, the distinctiveness of the word ‘vinzeo’ is considered average for the relevant services.

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. 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).

The graphic stylisations of the verbal elements of the signs, including their colouring, as described in detail above, perform only a decorative function within the signs and, accordingly, have only a low impact on the consumer’s perception.

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 ‘Be’/‘3e’ and the elements ‘Vi’ and ‘by vinzeo’ of the earlier mark are normally distinctive.

The verbal elements of the signs ‘ViCloud’ and ‘Be(3e)Cloud’ overshadow all the other elements by virtue of their central position and size. Consequently, they are the visually dominant elements of the signs.

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 ‘Vi’ and ‘by vinzeo’ in the earlier mark and ‘Be’/‘3e’ in the contested sign.

Although the signs are also visually differentiated by the graphic stylisations and colours of their verbal elements and by the figurative element of the contested sign, 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. Some aural similarity can also be found in the pronunciation of the letters ‘Vi’ and ‘Be’ from the perspective of the English- and Spanish-speaking parts of the public (see below).

However, the signs differ in the sound of the remaining words/letters, namely ‘Vi’ and ‘by vinzeo’ of the earlier mark and ‘Be’/‘3e’ of the contested sign, with ‘Vi’ and ‘Be’ being aurally different for the non-English- and non-Spanish-speaking public. Furthermore, they differ in the number of syllables (six in the earlier mark and two in the contested sign), which means that the signs have different rhythms and intonations.

In its submissions, the opponent emphasises that according to the Office’s practice the first part of the sign is generally the one that primarily catches the consumer’s attention and has a significant influence on the general impression made by the sign. Although it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, in the present case only the English- and Spanish-speaking parts of the public may perceive some aural identity/similarity in the initial parts of the signs due to the same/very similar pronunciation of the letters ‘V’ and ‘B’ (Spanish speakers) and ‘i’ and ‘e’ (English speakers). For the rest of the public in the relevant territory, no identity or similarity can be found at the beginning of the conflicting signs on either a visual or aural level. In any case, the fact that the signs coincide in some sounds at their beginnings for only some parts of the public in the relevant territory cannot prevail in the present case and cannot undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

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 services and as all the other concepts are either not so significant (‘Vi’ and ‘by’ in the earlier mark and ‘Be’ in the contested sign, perceived by only some parts of the relevant public) or weak (the figurative element of the contested sign), the signs are conceptually similar to a low 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. 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 services in question are identical, the relevant public consists of the public at large and professionals, the degree of attention varies from average to 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 on all levels (visual, aural and conceptual), 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).

Although the differences between the signs are not particularly striking, they are still readily perceptible and are sufficient to enable the relevant public, not only the part with a high degree of attention, but also the part with an average 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 (‘Vi’ and ‘Be’/‘3e’), but also those that are in a secondary position (‘by vinzeo’ of the earlier mark) or have a lower degree of distinctiveness (i.e. the figurative element of the contested sign and the graphic stylisations and colours of the verbal elements). In addition, the word ‘vinzeo’ in the earlier mark has a significant impact on the assessment of a likelihood of confusion in the present case, since it designates the commercial origin of the relevant services, although it is less dominant than the other elements of the mark. 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 services at issue.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings. This is even the case of the general public with an average degree of attention.

The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that the services in question are found to be identical cannot, in this case, compensate for the differences identified between the signs.

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

Chantal VAN RIEL

Martin MITURA

Vít MAHELKA

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.