OPPOSITION No B 2 763 244

Wolters Kluwer France, 14 Rue Fructidor, 75017 Paris, France (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)

a g a i n s t

Xtream Sistemas de Informacion Global S.L., C/ Fernando Rey 1 (Ciudad de la Imagen), 28223 Madrid/Pozuelo de Alarcón, Spain (applicant), represented by Kapler, Calle Orense 10, 1º Of. 12, 28020 Madrid, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 763 244 is upheld for all the contested goods. 

2.        European Union trade mark application No 15 335 326 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 335 326. The opposition is based on French trade mark registration No 53 358 622. 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

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

Class 9         Software and software packages for legal professions and law professionals 

Class 42         Computer software design for legal professions and law professionals 

The contested goods are the following:

Class 9         Computer programs and computer software for audiovisual session recording and management, regardless of the recording or distribution media therefor, including computer software recorded on magnetic data carriers or downloaded from a remote computer network. 

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 ‘including’, used in the applicant´s list of goods, indicates that the specific goods 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 computer programs and computer software for audiovisual session recording and management, regardless of the recording or distribution media therefor, including computer software recorded on magnetic data carriers or downloaded from a remote computer network overlap with the opponent’s software and software packages for legal professions and law professionals.

Therefore, they are identical.

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 found to be identical are mainly directed at business customers with specific professional knowledge or expertise. They can be higher in price and the consumer may pay special attention to certain functional characteristics of the goods.

The degree of attention will therefore be higher than average.

3. The signs

CICERON
Earlier trade mark	Contested sign

The relevant territory is France.

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 CICERON will, despite a missing accent on the letter E, be understood by the relevant public as the French version of the name Cicero, referring to a famous Roman statesman, lawyer, scholar and writer who is remembered in modern times as the greatest Roman orator and the innovator of what became known as Ciceronian rhetoric. The element CICERO of the contested sign will be associated with the same concept as explained above; the French consumer will identify it as the original Latin spelling of the aforesaid name. Both these elements have no meaning in respect of the goods in question and are, therefore, distinctive.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are numerous elements, such as the verbal elements GRABACIÓN, CATALOGACIÓN Y CONSULTA DE JUICIOS that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The contested sign furthermore contains a distinctive circular element in blue and white containing dots and lines, which is located before the verbal element CICERO. Its further figurative elements namely two small blue dots in the beginning and at the end of the sign and the stylization of the letters CICERO are of a purely decorative nature and, therefore, of low distinctiveness.

The element CICERO in the contested sign in combination with the circular figurative element before it, are the co-dominant elements as they are the most eye-catching.

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).

Visually, the signs coincide in the string of letters CICERO, forming the entirety of the earlier mark and six out of seven letters of the co-dominant element CICERON of the contested sign. They differ in the additional last letter N of the aforesaid verbal element and the figurative elements of the contested signs, which have no counterpart in the earlier mark. The remaining verbal elements of the contested sign are negligible and therefore have no impact.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters CICERO, forming the entirety of the earlier mark and six out of seven letters of the element CICERON of the contested sign. They differ in the additional last letter N of the aforesaid verbal element. The remaining verbal elements of the contested sign are negligible and therefore have no impact. Also the figurative elements of the contested signs have no impact on its pronunciation.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the same concept. The remaining verbal elements of the contested sign are negligible and therefore have no impact. Therefore, they are conceptually identical.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are identical, the signs are visually similar to an average degree, aurally highly similar and conceptually identical. The attention of the relevant public will be higher than average and the distinctiveness of the earlier mark is normal.

There is a likelihood of confusion because the contested sign incorporates the entirety of the earlier mark and the differences between the signs are mainly confined to secondary elements and aspects, namely figurative elements, to which the consumer will pay less attention, and negligible verbal elements. The addition of the letter N at the end of the contested signs dominant verbal element does not sufficiently separate the signs from each other, as the relevant public will still associate them with the same concept.

Account is also 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 need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 53 358 622. It follows that the contested trade mark must be rejected for all the contested goods.

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

Peter QUAY

Tobias KLEE

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.