OPPOSITION No B 2 804 865

Synnex Corporation, 44201 Nobel Drive, Fremont, CA 94538, United States of America (opponent), represented by Gomis & Lacker Avocats AARPI, 84 rue d'Hauteville, 75010 Paris, France (professional representative)

a g a i n s t

Conzoom, S.L., Calle Llacuna, 166, 1ºD, 08018 Barcelona, Spain (applicant).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 804 865 is upheld for all the contested services.

2.        European Union trade mark application No 15 671 654 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 671 654, for the word mark ‘CONZENTRIC’. The opposition is based on European Union trade mark registration No 9 741 844, for the word mark ‘CONCENTRIX’. 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 services

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

Class 9: Computer software; downloadable computer software; computer operating programs; computer software packages; application software; communications processing computer software; computer e-commerce software; computer operating system software; computer interface software; computer search engine software; computer software development tools; computer software for database management; computer software for use in computer access control; data communications software; all of the above excluding electronic games software, sold with instructions manuals thereto related.

Class 35: Business management; business inquiries, business investigations, business research, commercial or industrial management assistance, compilation of information into computer databases, computerized file management; marketing and advertising services; business consulting services; design and development of marketing and advertising materials for others; market research and analysis services; pre-product launch sales and marketing support services, namely providing marketing analytics, integration of marketing research and analytics, providing marketing strategies and providing development, implementation and management of marketing and advertising campaigns; consulting and support services in the nature of providing marketing analytics, integration of marketing research and analytics, providing marketing strategies and providing development, implementation and management of marketing and advertising campaigns; operation and management of telephone call centers for others; business consultation, namely, strategic marketing analysis, promoting the goods and services of others through a global computer network, computerized database management, direct mail advertising, telemarketing, and developing promotional campaigns for businesses; business process outsourcing (BPO) services; managing technology contract renewal services for customers, vendors, distributors and resellers; customer relationship management services; customer service management for others.

Class 42: Computer software design and development; maintenance of computer software; data conversion of computer programs and data; ASP (Application Services Provider) services, namely, hosting computer software applications for others; provision of online non-downloadable software; provision of online non-downloadable software for use in managing technology contract renewals for customers, vendors, distributors, and resellers; provision of online non-downloadable software for use in customer relationship management (CRM); computer technology support services, namely, help desk services; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support, namely, monitoring of network systems; technology advice provided by means of a support hotline; technical support services, namely, installation, administration, and troubleshooting of web and database applications; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical consulting and troubleshooting services in the fields of computer software, and computer and information technology networks and infrastructure installation, maintenance, updating and repair; technical consulting and assistance with computer-based information systems and components, provided on behalf of others; computer software design, development and customization services for others; integration of computer hardware, computer software and computer networks; graphics, multimedia and website design and consulting services for others; development of customized multimedia applications for online use; database development and customization services; technical writing services; design and development of interactive digital multimedia presentations and demonstrations for others in the field of computer hardware, computer software and information technology; design and development of online portals and digital content for online portals; computer software, computer hardware, and computer network testing services; provision of hosted computer programs on data networks, in particular on the internet and the worldwide web, namely non-downloadable software for use in business process outsourcing ("BPO") services; technical support services for troubleshooting computer software problems provided by means of an online computer database; provision of online computer databases featuring information in the fields of computer software; provision of online computer databases featuring information for troubleshooting problems with computers, computer hardware, computer software and computer networks; computer programming services; updating of computer software services; computer consultancy services; recovery of computer data; computer services, namely remote management and monitoring of computers, computer software, computer hardware, and computer networks; computer services, namely computer data storage management; all of the foregoing excluding web hosting and telecommunications services.

The contested services are the following:

Class 35: Commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services.

Class 42: Design services; IT services; testing, authentication and quality control; science and technology services.

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 ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Contested services in Class 35

Business management; business research services; advertising and marketing services are identically contained in both lists of services.

The contested commercial trading and consumer information services are included in, or overlap with, the broad category of the opponent’s commercial management assistance. Therefore, they are identical.

The contested business assistance and administrative services are included in, or overlap with, the broad category of the opponent’s business consulting services. Therefore, they are identical.

The contested business analysis and information services include, as a broader category, or overlap with, the opponent’s market research and analysis services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested promotional services include, as a broader category, the opponent’s business consultation, namely, promoting the goods and services of others through a global computer network. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 42

The contested design services include, as a broader category, the opponent’s computer software design, the contested IT services include, as a broader category, the opponent’s computer technology support services, the contested testing, authentication and quality control include, as a broader category, the opponent’s computer network testing services, and the contested science and technology services include, as a broader category, the opponent’s computer software design and development. Since the Opposition Division cannot dissect ex officio the broad categories 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 specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

CONCENTRIX	CONZENTRIC
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).

Both conflicting marks, ‘CONCENTRIX’ and ‘CONZENTRIC’, are coined terms and therefore, they are distinctive. However, a significant part of the relevant territory will associate both with the word ‘concentric’ in English, or to the equivalent word in the different languages, such as ‘concéntrico’ in Spanish, ‘concentrico’ in Italian, ‘koncentriske’ in Danish, ‘concentrisch’ in Dutch, ‘concentrique’ in French, ‘koncentrisch’ in German, ‘koncentrisks’ in Latvian, ‘concentric’ in Romanian ‘concêntrico’ in Portuguese or ‘koncentrisk’ in Swedish, since they are very close. In this regard, both marks will be perceived as the adjective ‘of or denoting circles, arcs, or other shapes which share the same centre, the larger often completely surrounding the smaller’ (information extracted from Oxford Dictionaries on 11/09/2017 at www.oxforddictionaries.com). Bearing in mind that there is no relationship whatsoever with the relevant services, these elements are also distinctive for this part of the relevant public.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the string of letters and sounds ‘CON*ENTRI*’, which are eight out of the ten letters that form the conflicting signs. However, they differ in the letters and sounds ‘C/Z’ and ‘X/C’, placed in the same positions within the signs. Three syllables form the respective signs, ‘CON-CEN-TRIX’ the earlier mark and ‘CON-ZEN-TRIC’ the contested sign. In the case of the second syllables of the signs, ‘CEN/ZEN’, the pronunciation will be very close, if not identical (e.g. in Danish, Spanish and Swedish); and in the case of the final syllables, ‘TRIX/TRIC’, they are only aurally differentiated by the last sound and even this difference is slight, as the former will be aurally perceived as the plural of the latter.

The signs are long and only differ in two letters/sounds that, moreover, are not easy to signal out due to their positioning in the sign. According to settled case law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not the case here. As a consequence, the relevant public would not be aware of the difference in just two letters/sounds.

Therefore, the signs are visually and aurally highly similar.

Conceptually, strictly speaking neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible in this scenario, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for a significant part of the relevant public that will perceive both signs with the very similar word in the respective languages, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For this part of the relevant public, as both signs will be perceived as ‘concentric’, the signs 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 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

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).

The services are identical. The degree of distinctiveness of the earlier mark is normal and the degree of attention of the relevant public varies from average to high.

The signs are visually and aurally highly similar since they coincide in most of their letters placed in the same order, ‘CON*ENTRI*’. The differing letters are not easy to signal out since they are in the fourth and tenth positions. Furthermore, the differing letters have very similar sounds in many of the languages in the relevant territory. From a conceptual perspective, either the conceptual comparison is not possible or the signs are conceptually identical, depending on the part of the public, as stated above.

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 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 European Union trade mark registration No 9 741 844. It follows that the contested trade mark must be rejected for all the contested services.

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

Marta GARCÍA COLLADO

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.