OPPOSITION No B 2 417 247

d.velop AG, Schildarpstr. 6-8, 48712 Gescher, Germany (opponent), represented by LLR Legerlotzlaschet Rechtsanwälte GbR, Mevissenstr. 15, 50668 Köln, Germany (professional representative)

a g a i n s t

Diabetes Tools Sweden AB, Sveavägen 166, 113 46 Stockholm, Sweden (applicant), represented by Awapatent AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 417 247 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 12 892 139. The opposition is based on European Union trade mark registration No 3 777 018 and German trade mark registrations No 39 626 474, No 39 626 810 and No 30 205 315. 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:

European Union trade mark registration for the figurative mark

Class 9:        Computer software; electric apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound and/or images; data processing equipment and computers and individual parts therefor, peripheral devices, in particular keyboards, monitors, printers, drives, interfaces, cards, scanners, optical storage devices (included in class 9);machine-readable data carriers of all kinds with programs/data installed, including magnetic data carriers; ancillary equipment for computers and data processing equipment, in particular scanners and optical storage devices.

Class 16:        Printing materials; folders for papers, archive bags.

Class 35:        Business consultancy, in particular with regard to EDP and the optimisation of business working procedures; organization consultancy; professional business consulting; marketing; consultancy with regard to the archiving of data and archive planning; online provider services, namely the gathering of information; online provider services, namely gathering of information, in particular on the Internet; archive management consultancy; archiving, archive management, archive maintenance.

Class 38:        Telecommunications; Internet provider services (included in class 38);online provider services, namely transmission of information and providing of information in the field of telecommunications (included in class 38); online provider services, namely transmission of information and providing of information in the field of telecommunications, in particular on the Internet (included in class 38), leasing of access time to a computer database; data transmission for archiving and information purposes; transmission of advertising on the Internet.

Class 41:        Providing of training and further training; conducting training courses in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment, and in connection with the archiving of data and archive management.

Class 42:        Creation of programs for data processing; technical consultancy, in particular with regard to the archiving of data and archive planning; rental of web servers and providing of memory space on the Internet; design and creation of World Wide Web presentations, homepages, Internet applications and e-commerce applications; Internet and IT security consultancy; consultancy in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment; business consultancy, namely with regard to software; creation of programs for data processing; creating software for databases.

German trade mark registration No 39 626 474 for the figurative mark

Class 9:        Data processing equipment, computers and for some accessories, namely keyboards, monitors, printers, drives, interfaces, cards; ancillary equipment for computers and data processing equipment, in particular scanners and optical storage devices; programs provided with machine readable data carriers of all kinds, including magnetic data carriers; repair and maintenance of products of electrical engineering and computers and computer accessories and computer peripherals; creation of programs for data processing; conducting consultations and/or training courses in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment

German trade mark registrations No 39 626 810 and No 30 205 315 for the word marks ‘d.3’

Class 9:        Data processing equipment, computers and for some accessories, namely keyboards, monitors, printers, drives, interfaces, cards; ancillary equipment for computers and data processing equipment, in particular scanners and optical storage devices; programs provided with machine readable data carriers of all kinds, including magnetic data carriers; repair and maintenance of products of electrical engineering and computers and computer accessories and computer peripherals; creation of programs for data processing; conducting consultations and/or training courses in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment

Class 42: Software; electric apparatus and instruments (included in class 9); apparatus for the recording transmission and reproduction of sound or images; data processing equipment and computers and parts therefor, computer peripheral devices, in particular keyboards, monitors, printers, drives, interfaces, cards, scanners, optical storage devices (included in class 9);machine-readable data carriers of all kinds; printing materials; folders for papers, archive bags; business consultancy, in particular with regard to computing and the optimisation of business working procedures; organization consultancy; professional business consulting; marketing; consultancy with regard to the archiving of data and archive planning; providing of training and further training; conducting training courses in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment, and in connection with the archiving of data and archive management; Archiving, archive administration, supply of archives; data transfer for archiving and information purposes; Creation of programs for data processing; database services including operating databases, in particular provision of archived data for authorised persons; leasing database access time; technical consultancy, in particular with regard to the archiving of data and archive planning; Transmission of advertising via internet; rental of webservers and providing of memory space on the Internet; design and creation of Internet presentations, homepages, Internet applications and e-commerce applications; Internet and IT security consultancy

The contested goods and services are the following:

Class 9: Software, mobile applications and databases for the use in healthcare; software and mobile applications for collecting, uploading, processing, analysis and communication of information obtained from medical measuring instruments for the purpose of monitoring the health of people; databases compiled from information obtained from medical measuring instruments for the purpose of monitoring the health of people.

Class 38: Arranging access to databases, web portals, web pages for the use in healthcare; arranging access to databases, web portals and web pages with the compilation and presentation of information obtained from medical measuring instruments for the use within preventive care and care of diabetes and diabetes related diseases.

Class 42: Design, development and updating of software, mobile applications, databases, web portals and web pages for the use in healthcare; design, development and updating of software and mobile applications for the use within preventive care and care of diabetes and diabetes related diseases; design, development and updating of databases, web portals and web pages with the compilation and presentation of information obtained from medical measuring instruments for the use within preventive care and care of diabetes and diabetes related diseases.

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 marks.

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 assumed to be identical are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. The signs

European Union trade mark German trade marks d.3
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany.

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 European Union trade mark and German trade mark 1) are both figurative trade marks consisting of the lower case letter ‘d’ placed within a circular frame and, in German mark 1), stylised with various patterns of dots. Although a part of the public may not see the concept of the lower case letter ‘d’ in these signs but rather perceive them as fanciful, the Opposition Division will focus its examination on the part of the public that perceives the letter ‘d’, since this part of the public would be more prone to confusion.

Earlier marks 2) are the word marks ‘d.3’. In the case of word marks, it is irrelevant whether they are in upper or lower case letters, since the word as such is protected and not its written form. Therefore, it is immaterial in the present case whether the letter ‘d’ is in upper or lower case.

The contested sign is a figurative mark that contains a white upper case letter ‘D’ preceded by an apostrophe. These elements are placed against a complex figurative element consisting of superimposed triangles in different colours, blue, yellow and red, with their coinciding parts forming a black polygonal background.

Regarding the arguments submitted by both parties in relation to the distinctiveness of the letter ‘d’ in the signs, the General Court has stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51). In its judgment of 10/05/2011, T-187/10, G, EU:T:2011:202, § 38-49, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that, therefore, only their graphic depiction would be protected. These components are not necessarily limited in their distinctiveness, unless the letter combination itself is descriptive or otherwise related to the goods and services in question.

In the present case, the letter ‘d’ as such has no meaning in relation to the goods and services in question. Neither do the stylised letters ‘d’/‘D’ of the figurative signs or the combination of the letter ‘d’ and the dot and numeral ‘3’ in the word marks as a whole. Consequently, they are considered distinctive. In addition, these signs have no elements that could be considered clearly more dominant or more distinctive than other elements.

Visually, all the signs coincide in containing a letter ‘d’. However, while this letter is in upper case in the contested sign, it is in lower case in the earlier figurative marks. The earlier figurative marks and the contested sign also differ in their additional geometrical elements, generally portrayed as circular frames in the earlier marks versus superimposed coloured triangles in the contested sign. The word marks ‘d.3’ contain additional elements following the letter ‘d’, namely a dot and the number ‘3’, which are not reproduced in the contested sign. It contains, instead, an apostrophe preceding the letter ‘D’.

As the earlier figurative marks and the contested sign coincide only in irrelevant aspects, namely the presence of the letter ‘d’, which has a different graphical depiction, it is concluded that these signs are not visually similar.

Furthermore, contrary to the opponent’s argument, the word marks contain a dot between the letter ‘d’ and the number ‘3’, while the contested sign contains an apostrophe before the letter ‘d’. The dot and the apostrophe are different punctuation marks, and the other differentiating elements in the signs create significant differences in the overall perceptions of the word marks and the contested sign. To that extent, they are considered visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the earlier figurative marks and the contested sign coincides in the sound of the letter ‛d’, present identically in all those marks. The apostrophe in the contested sign, as a punctuation symbol, will not be pronounced. Therefore, the signs are aurally identical, to the extent that they will be referred to orally.

Furthermore, the pronunciation of the word marks ‘d.3’ coincides with that of the contested mark in the same way. The signs will differ only in the pronunciation of the additional number ‘3’ in the earlier marks; for instance, in German they will be pronounced as ‘de/Punkt/drei’ or as ‘de/drei’, while the contested sign will be pronounced as only ‘de’. In this case, taking into account the previous findings, these signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. To the extent that the earlier figurative marks will be perceived as the letter ‘d’, the signs are conceptually identical.

Furthermore, although the earlier word marks contain the additional concept of the number ‘3’, the signs still have the letter ‘d’ in common and to that extent they are considered conceptually similar to an average 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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The earlier figurative trade marks  and , as well as the word marks ‘d.3’, taken as a whole, have no meaning for any of the goods and services in question from the perspective of the public in the relevant territories. Therefore, their distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are assumed to be identical and the degree of attention will vary between average and high, for the reasons given above.

In principle, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The additional/different elements are in specific cases clearly perceptible and sufficient to exclude any likelihood of confusion.

In the present case, the similarities between the signs are limited to the presence of a single letter. Although the signs coincide aurally and conceptually in the letter ‘d’, leading in both cases to identity (for the earlier figurative marks) or a certain degree of similarity (for the earlier word marks), this is not sufficient reason to conclude that there is any likelihood of confusion, including likelihood of association, as these similarities are based on the most basic, irreducible unit of language for word formation, as well as on the most basic semantic concept that a mark can convey, the single letter.

Furthermore, the Court also made it clear that the fact that two trade marks consisting of the same letter (or of the same sequence of letters) are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (see a reference to 10/05/2011, T-187/10, G, EU:T:2011:202, § 60). Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same single letter or a combination of letters not recognisable as a word, are stylised in a sufficiently different way or contain a sufficiently different figurative element that their different overall graphical depictions eclipse the verbal element that they have in common.

In the present case, the distinctiveness of the earlier marks is normal in relation to the goods and services in question. Considering that no enhanced distinctiveness was claimed or proven, the way the letters (and number) appear in each sign is then the determinant factor in the assessment of the signs. However, as stated above, the letter ‘D’ is depicted in very different manners in the signs.

The signs are visually dissimilar (in the case of the figurative marks) or visually similar only to a low degree (in the case of the word marks), and – although the relevant goods and services are assumed to be identical – this is not sufficient to find a likelihood of confusion, for the reasons given above. The Opposition Division considers that the graphical depictions of the earlier figurative marks show significant differences from the contested sign and the earlier words marks contain elements that have no counterparts in the contested sign. Consequently, the public in the relevant territories will be able to safely distinguish between goods and services originating from the two undertakings.

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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya  YORDANOVA

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.