OPPOSITION No B 2 703 463

Healix International Limited, Healix House, Esher Green, Esher, Surrey KT10 8AB, United Kingdom (opponent), represented by Blake Morgan LLP, New Kings Court, Tollgate, Chandler’s Ford, Eastleigh, Hampshire SO53 3LG, United Kingdom (professional representative)

a g a i n s t

Tradegame S.A., Rua do Viso 116, 4470-220 Maia, Portugal (applicant), represented by PLMJ, Edificio Eurolex, Av. da Liberdade 224, 1250-148 Lisbon, Portugal (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 703 463 is partially upheld, namely for the following contested goods and services:

Class 9:        Computer hardware and software for computers and mobile devices; central processing units for processing information, data, audio or images; computer software applications, downloadable.

Class 42:        Creation and maintenance of multi-platform websites; conversion of data via telecommunications networks.

2.        European Union trade mark application No 14 967 996 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 967 996, namely against all of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 5 329 743. 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 services on which the opposition is based are the following:

Class 42:        Computer programming and consultancy; design, development of computer software; design and development of websites, software and technical support services.

The contested goods and services are the following:

Class 9:        Computer hardware and software for computers and mobile devices; central processing units for processing information, data, audio or images; microscopes; computer software applications, downloadable.

Class 42:        Creation and maintenance of multi-platform websites; conversion of data via telecommunications networks; collection of samples and analysis for the evaluation of the levels of pollution and the presence of contamination.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Computer programming is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

Computer hardware is a collection of physical components that constitute a computer system. Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate.

Computer software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Computer software applications are a subclass of computer software that employs the capabilities of a computer directly and thoroughly for a task that the user wishes to perform.

Central processing units are the electronic circuitries within computers that carry out the instructions of a computer program by performing the basic arithmetic, logical, control and input/output operations specified by the instructions.

Therefore, the opponent’s design and development of websites, software and technical support services are closely linked to the contested computer hardware and software for computers and mobile devices; central processing units for processing information, data, audio or images; computer software applications, downloadable. This is because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example).

Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested microscopes are scientific instruments that make very small objects look bigger so that more detail can be seen. They are dissimilar to the opponent’s services in Class 42, which are all related to information technology, and in particular software. They have different natures, purposes and methods of use from all the opponent’s services. Furthermore, they differ in their consumers and distribution channels.

Contested services in Class 42

The contested creation and maintenance of multi-platform websites are included in the broad category of the opponent’s design and development of websites, software and technical support services. Therefore, they are identical.

The contested conversion of data via telecommunications networks is similar to the opponent’s development of computer software in Class 42. Clearly, a link exists between these services, although their natures are different, since they can have the same producers, end users and distribution channels.

The contested collection of samples and analysis for the evaluation of the levels of pollution and the presence of contamination are dissimilar to all of the opponent’s services. They clearly have different natures and purposes; furthermore, they differ in their end consumers and distribution channels.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of IT or in the field of contamination and pollution. The degree of attention of the relevant public varies from average to high, as some of the goods and services concerned are likely, due to their degree of sophistication and their cost, to be the subject of a careful purchasing decision.

3. The signs

HEALIX
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The terms ‘HEALIX’ and ‘HELIX’ are not meaningful for certain parts of the relevant public, for example for the Slovak-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier sign is a word mark consisting of the string of letters ‘HEALIX’, which has no meaning for the relevant public. Therefore, it is distinctive.

The contested sign is a figurative mark composed of the verbal elements ‘DATA HELIX TECH’, in a not overly stylised typeface, in white and grey upper case letters, against a greyish rectangular background.

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, the term ‘TECH’ is so small and blurry that it is illegible. As this element is therefore likely to be disregarded by the relevant public, it will not be taken into consideration for the purposes of the comparison.

The English term ‘DATA’, meaning ‘information that can be stored and used by a computer program’ (information extracted from Collins English Dictionary online on 30/03/2017 at www.collinsdictionary.com), will be understood by the relevant public, as it is practically identical to the equivalent Slovak word (‘dáta’). This word is widely used in relation to information in general, as well as in relation to items of information processed by a computer; consequently, it is descriptive of, and thus non-distinctive in relation to, the goods and services found to be identical or similar.

As stated above, the verbal element ‘Helix’ has no meaning for the relevant public and is, therefore, the most distinctive element of the sign.

Furthermore, the contested mark has no elements that could be considered clearly more dominant than other elements, although the grey rectangular background is considered a less distinctive figurative element (being essentially decorative) and will not distract consumers’ attention from the verbal elements.

Indeed, 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 ‘HE*LIX’. However, they differ in the letter ‘A’ in the middle of the earlier mark, on the one hand, and in the first element, ‘DATA’, which lacks distinctiveness, and in the (slight) stylisation of the letters and the grey background device (which is more decorative) in the contested sign, on the other hand.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HE*LIX’, present identically in both signs, which is distinctive. The pronunciation differs only in the sound of the additional letter ‘A’ of the earlier sign, which has no counterpart in the contested mark, on the one hand, and in the sound of the additional and non-distinctive word ‘DATA’ in the contested mark, on the other hand.

Furthermore, because the additional (single) letter ‘A’ is placed in the middle of the earlier mark, its pronunciation is more likely to go unnoticed. Therefore, the distinctive verbal elements of both marks are pronounced almost identically.

Consequently, the signs are aurally similar to a high degree.

Conceptually, only the element ‘DATA’ in the contested sign has a meaning, as detailed above, but this is not sufficient to establish a conceptual dissimilarity between the signs, as this element is non-distinctive and cannot indicate the commercial origin of any of the relevant goods and services. The attention of the relevant public will be attracted by the additional, and distinctive, verbal elements, none of which has a meaning for the public in the relevant territory. Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

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).

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.

The differences between the signs are confined to non-distinctive or secondary elements and aspects.

As some of the goods and services are identical or similar, due to the signs’ high degree of aural similarity and average degree of visual similarity, in the view of the Opposition Division a likelihood of confusion exists in relation to the goods and services that are identical or similar to more than a low degree.

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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Slovak-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 5 329 743. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Pierluigi M. VILLANI

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.