Detec | Decision 2715913 – Detect Value GmbH v. Normec 1 B.V.

OPPOSITION No B 2 715 913

Detect Value GmbH, Industriestr. 39c, 69190 Walldorf, Germany (opponent), represented by Jensen Emmerich, Marie-Curie-Ring 1, 24941 Flensburg, Germany (professional representative)

a g a i n s t

Normec 1 B.V., Willeskop 63A, 3417MB Montfoort, the Netherlands (applicant), represented by Michiel Steenhuis, Borneostraat 10, 5215 VC s-Hertogenbosch, the Netherlands (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 715 913 is partially upheld, namely for the following contested services:

Class 35: Commercial mediation, consisting of maintaining business contacts with clients on the one hand and the examining, approving and / or certifying body on the other hand, and administrative coordination and support of the investigations, inspections and certification procedures; business project related to research projects; administrative services related to the awarding and execution of quality certificates; consultancy regarding economics and business management; preparing expert reports in the field of business information and business organization; commercial project management; commercial- business consultancy for the development and implementation of quality assurance in the field of accredited certification for goods and services from manufacturers; advertising; business management; business administration; administrative services; business management consultancy; consultancy with regard to the corporate structure of companies; consultancy regarding the operations of businesses; research on corporate organizational areas within a company on developments within the industry in which the company operates; developing research methods regarding the aforesaid services; the preparation of expert reports by experts regarding the aforesaid services; compilation of statistics; market research and analysis; provision of business information; conducting commercial feasibility studies; analysis of competition; comparison of commercial products; commercial trend studies; services of a database, namely the composition, establishment and operation of data stored in databases in terms of quality of products from manufacturers and services providers; collecting, providing, creating and managing anonymous and industry related data to third parties as part of competition comparisons; organization of fairs and exhibitions; secondment of personnel; business project management; interim management; consultancy and information regarding the aforesaid services; lobbying for commercial purposes; the aforesaid services also provided via electronic networks such as the Internet.

Class 42: Scientific and technological services as well as research and design relating thereto; services in the field of industrial analysis and research; testing, analyzing and evaluating goods and services of third parties for certification purposes; research of material and technical advice thereto; laboratory services; preparation of expert reports by engineers or laboratory technicians; establishment of inspection regulations; certification of goods or services; drawing up and testing of standards, certification criteria and assessment guidelines; carrying out inspection tasks and audits (quality control); testing of products, services and systems based on certification criteria; supervising the quality of the products and services of third parties as well as providing certificates to the third party; preparation and issuance of quality certificates; comparative studies of the quality of goods and services; supervising and coordinating standardization activities, namely the establishment of rules (standards) as well as supervising their implementation; electronic storage [systematization] of data in a central file; professional consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet.

2. European Union trade mark application No 15 039 498 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 039 498. The opposition is based on European Union trade mark registration No 9 182 221. 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.

The goods and services

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

Class 9: Computer programs and software.

Class 35: Business management consultancy, consultancy with regard to computer-based operational management.

Class 42: Design and development of computer hardware and computer software, custom adaptation of standard software, industrial analysis and research, analysis of hardware systems and software systems and computer-based operational flows.

The contested services are the following:

Class 45: Legal advice in the context of obtaining permits; licensing in the field of intellectual property with the aim of authorizing the entry of labels to eligible institutions and businesses; supervising of the compliance with regulations in granting or obtaining permits; analysis of standards and practices to ensure compliance with laws and regulations; management of patent rights and licensing; lobbying, other than for commercial purposes; the aforesaid services also provided via electronic networks such as the Internet.

An interpretation of the wording of the applicant’s list of services is required to determine the scope of protection of these services. The term ‘namely’, to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 services in Class 35

The contested business project related to research projects; consultancy regarding economics and business management; preparing expert reports in the field of business information and business organization; commercial project management; commercial- business consultancy for the development and implementation of quality assurance in the field of accredited certification for goods and services from manufacturers; business management; business management consultancy; consultancy with regard to the corporate structure of companies; consultancy regarding the operations of businesses; research on corporate organizational areas within a company on developments within the industry in which the company operates; developing research methods regarding the aforesaid services; the preparation of expert reports by experts regarding the aforesaid services; business project management; market research and analysis; provision of business information; conducting commercial feasibility studies; analysis of competition; comparison of commercial products; commercial trend studies; interim management; secondment of personnel; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet are identically listed or overlap with the opponent’s broad categories business management consultancy, consultancy with regard to computer-based operational management and are therefore, identical.

The contested commercial mediation, consisting of maintaining business contacts with clients on the one hand and the examining, approving and / or certifying body on the other hand, and administrative coordination and support of the investigations, inspections and certification procedures; administrative services related to the awarding and execution of quality certificates; business administration; administrative services; consultancy and information regarding the aforesaid services; lobbying for commercial purposes; the aforesaid services also provided via electronic networks such as the Internet relates to the performance of business operations and thus the implementing of major decisions. It concerns the miscellany of the day-to-day management of a business as well as specific services provided by a given company to its clients. On the other hand, the opponent’s business management consultancy, consultancy with regard to computer-based operational management are usually rendered by companies specialised in this specific field such as business consultants, consist of gathering information and providing tools and expertise to enable their customers to carry out their business or providing businesses with the necessary support to acquire, develop and expand market share. The services under comparison are similar since they coincide in their intended purpose, are directed at the same professional public and are usually rendered by the same companies.

Advertising; organization of fairs and exhibitions; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet are essential tools in business management because they make the business itself known in the market. The purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, these contested services are similar to a low degree to the opponent´s business management consultancy.

Finally, the contested compilation of statistics; services of a database, namely the composition, establishment and operation of data stored in databases in terms of quality of products from manufacturers and services providers; collecting, providing, creating and managing anonymous and industry related data to third parties as part of competition comparisons; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet cover the ‘back office’ administration and support services. They are similar to a low degree to the opponent’s business management consultancy, consultancy with regard to computer-based operational management since they can be offered by the same specialised suppliers, those services are aimed at the same consumers, namely, professional business customers and, they contribute to the same purpose, that is, the proper running and success of an undertaking.

Contested services in Class 42

Services in the field of industrial analysis and research (the aforesaid services also provided via electronic networks such as the Internet) are, despite a different wording, included in the list of services of both marks under comparison. The contested professional consultancy relating to services in the field of industrial analysis and research are included in the opponent’s broad category industrial analysis and research. Therefore, they are identical.

The contested testing, analyzing and evaluating goods and services of third parties for certification purposes; research of material and technical advice thereto; preparation of expert reports by engineers or laboratory technicians; establishment of inspection regulations; certification of goods or services; drawing up and testing of standards, certification criteria and assessment guidelines; carrying out inspection tasks and audits (quality control); testing of products, services and systems based on certification criteria; supervising the quality of the products and services of third parties as well as providing certificates to the third party; preparation and issuance of quality certificates; comparative studies of the quality of goods and services; supervising and coordinating standardization activities, namely the establishment of rules (standards) as well as supervising their implementation; professional consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet are all included in the opponent’s broader category industrial analysis and research and are, therefore, identical.

The contested scientific services as well as research and design relating thereto; electronic storage [systematization] of data in a central file; professional consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet are similar to the opponent’s design and development of computer hardware and computer software. They are services provided by the same engineering companies, are directed at the same public and share the same nature as services.

Finally the contested technological services as well as research and design relating thereto; laboratory services; professional consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks such as the Internet are similar to the opponent’s design and development of computer hardware. All are services provided by the same companies which investigate in the material search, and creation of hardware. They are directed at the same public and provided to the same public.

Contested services in Class 45

The contested legal advice in the context of obtaining permits; licensing in the field of intellectual property with the aim of authorizing the entry of labels to eligible institutions and businesses; supervising of the compliance with regulations in granting or obtaining permits; analysis of standards and practices to ensure compliance with laws and regulations; management of patent rights and licensing; lobbying, other than for commercial purposes; the aforesaid services also provided via electronic networks such as the Internet are all legal services provided by specialists in the area of law. When comparing these services with the opponent’s goods and services in Classes 9, 35 and 42, they are deemed dissimilar as they have a different nature and intended purpose. Moreover, they are neither complementary nor in competition with each other and also differ in their commercial origin and channels of distribution.

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.

The services considered identical and similar to various degrees target the professional and the general public whose degree of attention is rather high because of the specialised nature, price and sophistication of the services.

The signs

Image representing the Mark

DETEC

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 earlier mark is composed of the word element ‘DETECT VALUE’, in grey capital letters, followed by three rectangles of different length and colours forming a graphic and underneath, in title italic characters of smaller size, the word element ‘Business Intelligence’. The sign also reproduces a reflection of the word element ‘DETECT VALUE’ and the three rectangles; however, since they are hardly perceptible, they will not be taken into account in the comparison of the signs.

The element ‘DETECT VALUE’ of the earlier mark will be perceived by the English-speaking part of the relevant public as an expression referring to ‘finding out the material or monetary worth of something’. Although part of the relevant services are business management consultancy, there is not a clear link between the meaning of this expression and these services in order to make this expression descriptive, weak or non-distinctive.

On the other hand, the element ‘Business Intelligence’ of the earlier mark will be associated by the English-speaking public with the set of strategies, processes, data, technologies and technical architectures which are used by enterprises to support the collection, data analysis, presentation and dissemination of business information. Bearing in mind that the relevant services are business management consultancy, hardware and software design and development and industrial analysis and research, this element will be perceived as describing the nature or intended purpose of the services and therefore it has non-distinctive character.

Moreover, the word element ‘Business Intelligence’ of the earlier trade mark, due to its smaller size and position, has a secondary position and is overshadowed by the rest of the verbal and figurative elements of the mark.

The contested sign ‘DETEC’ has no meaning for the relevant public. It has no elements that could be considered more distinctive or dominant than other elements.

Visually, the signs coincide in the letters ‘DETEC*’ which compose the totality of the contested sign, and differ in the additional word elements of the earlier sign, namely, the final letter ‘T’ of the word ‘DETECT’, the word ‘VALUE’ and the non-distinctive and secondary element ‘Business Intelligence’.

The signs also differ in the figurative elements of the earlier mark. However, 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).

Therefore, and bearing in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the signs are visually similar to an average 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 letters ‘DETEC*’, which composes the totality of the contested sign and the first letters of the word ‘DETECT’ of the earlier mark. The pronunciation differs in the sound of the word ‘VALUE’ of the earlier mark, which has no counterpart in the contested sign. Moreover, the pronunciation slightly differs in the sound of the final letter ‘T’ of the word ‘DETECT’ of the earlier mark.

As to the non-dominant element ‘Business Intelligence’ of the earlier sign, the same considerations are applicable at the aural perspective. For reasons of language economy according to which consumers tend to simplify the pronunciation of long signs, the Opposition Division considers that at least part of the consumers will not pronounce this word element. In any case, at least for the English-speaking public, it is a non-distinctive element in the earlier sign.

Therefore, considering that the only word element of the contested sign is fully reproduced in the first (distinctive and co-dominant) word element of the earlier mark, the signs are considered to be aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the different word and figurative elements of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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).

Moreover, 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.

Part of the services has been found either identical or similar to various degrees. Moreover, the signs are visually and aurally similar to an average degree. The differences brought by the additional elements of the earlier mark are not of such nature as to counteract the similarities lying in the fact that the contested sign is almost entirely reproduced in the first (distinctive and dominant) element of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark, including, due to the degree of similarity existing between the marks, those services similar to a low degree.

The rest of the contested 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 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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.

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