OPPOSITION No B 2 437 773

itl Institut für technische Literatur AG, Elsenheimerstraße 65, 80687 München, Germany (opponent), represented by Zwipf Rosenhagen Rechtsanwälte Partnerschaft, Palaisplatz 3, 01097 Dresden, Germany (professional representative)

a g a i n s t

Essetech Srl, Via Mazzini 205, 92100 Agrigento, Italy (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 437 773 is upheld for all the contested services.

2.        European Union trade mark application No 13 212 097 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 212 097 for the figurative mark . The opposition is based on European Union trade mark registration No 10 602 886 of the word mark ‘i-flow’. 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 services

The services on which the opposition is based are, inter alia, the following:

Class 42: Technical services of a documentation creator, namely writing of technical handbooks in the form of printed matter and in electronic form; Writing technical information in information management systems; Creating software for generating and processing information; Planning, design, development, installation, support, updating, administration and maintenance of software in the field of technical documentation; Design office services with regard to the design of man-machine interfaces, namely the design of software interfaces; Creating indexes (programs) for information, websites and other resources, which are available via computer networks; Design, creation and maintenance of websites on the Internet for others (web hosting); Creation of computer graphics; Technical analysis, consultancy, support relating to the creation and use of electronic data processing and office communications; Verification and evaluation of information systems and system housings; Creation and maintenance of websites on the Internet for others; Design of databases for Internet and online operation.

The contested services are the following:

Class 42: IT services; Rental and maintenance of computer software; Customization of computer hardware and software; Design of cd-rom electronic format for computer databases; Design of computer machine and computer software for commercial analysis and reporting; Design of computer cluster configurations; Computer network design for others; Design of communication systems; Computer specification design; Design of telecommunications apparatus and equipment; Database design and development; Design and development of computer hardware and software; Design and development of networks; Design services relating to the creation of networks; Designing, managing and monitoring online forums for discussion; Programming of electronic control systems; Troubleshooting of computer hardware and software problems; Research relating to the computerised automation of administrative processes; Research relating to computers; Research relating to data processing; Research relating to the computerised automation of industrial processes; Research relating to the computerised automation of technical processes; Research relating to telecommunication techniques; Technological research relating to computers; Computer research services; Rental of computer hardware and facilities; IT consultancy, advisory and information services; Data duplication and conversion services, data coding services; Hosting services and software as a service and rental of software; IT security, protection and restoration; Computer hardware development; Software development, programming and implementation; Computer rental and updating of computer software; Updating of memory banks of computer systems; Updating websites for others; Computerised analysis of data; Computer system analysis; Computer analysis; Preparation of computer programs for data processing; Computer diagnostic services; Data mining; Digital watermarking; Operating search engines; Computer project management services; Computer graphics services; Integration of computer systems and networks; Monitoring of computer systems by remote access; Rental of computers and computer software; Rental of computer hardware and computer software; Technical research relating to computers; Analytical services relating to computers; Computer network configuration services; Computer design and programming services; Computer systems integration services; Design services relating to computer hardware and to computer programmes; Computer system design; Design services relating to data processing test tools; Design services relating to data processing tools; Design services relating to data transmission test tools; Computer design services; Design services for data processing systems; Design services relating to data processors; Design services relating to the development of computerised information processing systems; Data migration services; Information technology services for the pharmaceutical and healthcare industries; Computer network services; Technological services relating to computers; Development of computer based networks; Development of computer systems; Development of systems for the processing of data; Development of systems for the storage of data; Development of systems for the transmission of data.

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.

Both the contested services and the opponent’s services in Class 42 can be grouped under the general category of IT services, which are dedicated to the study or use of computers, storage, networking and other physical devices, infrastructure and processes to create, process, store, secure and exchange all forms of electronic data. Consequently, they target the same consumers, are provided through the same distribution channels and are generally rendered by the same kind of undertakings (professionals in the IT field) that normally provide a full spectrum of information technology (IT) solutions tailored to the needs of their customers. Therefore, these services are at least similar.

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 in Class 42 are provided by computer specialists and systems analysts primarily for businesses and undertakings wishing to further their activities using information technology, whose level of attentiveness is deemed to be high when purchasing them.

3. The signs

i-flow
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).

In this respect it must be noted that the element ‘CRM’ of the contested sign will be perceived by the relevant consumers of the IT services in question as an abbreviation for ‘customer relationship management’ and, thus, as denoting that the contested IT services are intended to help other companies to organize and optimize their customer relations and as such this term is non-distinctive. Its impact is further diminished by its relative position within the arrangement of the mark, being in smaller print and in a less prominent position than the more outstanding preceding element ‘eflow’ which is the dominant element.  

Moreover, the relevant professional consumers will perceive the earlier mark ‘i-flow’ and the dominant element of the contested sign, ‘eflow’, as being composed of the elements ‘flow’ and the prefixes ‘e-’ and ‘i-’ respectively, since the latter are commonly used in the IT sector to denote ‘electronic’ and ‘internet’ and refer to essential characteristics of the services. As a consequence, these prefixes are also non-distinctive.

The shared element ‘flow’, on the other hand, has no direct meaning in relation to the services at hand. Although this word exists in English and in the field of IT may be suggestive of a flow of information, this interpretation involves too many mental steps to affect its distinctive character and, therefore, this element must be considered distinctive.

Visually, the signs coincide in the distinctive verbal element ‘flow’ and in their structure, both consisting of a prefix followed by the word ‘flow’. They differ in their prefixes, ‘i-’ versus ‘e’, and in the design and additional verbal element of the contested sign. However, these differentiating elements cannot counterbalance the more striking visual similarities caused by their commonalities, considering that the common verbal element ‘flow’ is the sole distinctive element of both marks and is preceded in both marks by a commonly used prefix of little impact. For reasons explained above, the additional element ‘CRM’ plays a minor role within the contested sign due to its relative position and clear reference to the final purpose of the services. As regards the design of the contested sign, in particular the arrow attached to the letter ‘W’, this feature is commonly used in trade to decorate marks and, therefore, will not distract the consumers’ attention away from the word it merely embellishes. Hence, overall the signs must be considered visually similar to an average degree.

Aurally, it must be taken into account that the word ‘CRM’ of the contested sign is not likely to be pronounced due to its secondary position within the mark (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342 and 03/06/2015, joined cases T-544/12, PENSA PHARMA, EU:T:2015:355 and T-546/12, pensa, EU:T:2015:355) and clear reference to the final purpose of the services (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 44). The remaining elements, that is, the dominant element of the contested sign and the earlier mark are pronounced as [I-FLOW] and [E-FLOW] of which the second syllables are identical. Although their first syllables sound different, overall, the signs produce a similar rhythm and intonation due to the fact they are pronounced in two syllables and start with a vowel sound followed by the same word. Moreover, this first syllable has less impact due to its non-distinctive character. Therefore, overall the marks are aurally similar to a high degree.

Conceptually, as remarked above, both marks are composed of meaningful elements, of which the common element, ‘flow’, evokes the same concept and the others, i.e. the prefixes, the term ‘CRM’ and the arrow, evoke different concepts. However, considering that the combined terms ‘i-flow’ and ‘eflow’ do not form a clear and unambiguous semantic unit and that the different elements are purely informative or decorative, the non-coinciding concepts have very little impact on the overall perception of the signs and do not really serve to distinguish the marks conceptually. Therefore, overall, the signs must be considered to be conceptually similar to a high 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 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.

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 (eighth recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark enjoys a normal degree of distinctiveness. The services are at least similar and must be assessed from the point of view of a professional public whose degree of attention is high. In this respect it must be noted that 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).

Also 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).

The signs are visually similar to an average degree and aurally and conceptually similar to a high degree, considering that the dominant element of the contested sign has a similar structure and meaning as the earlier mark.

Therefore, in an overall assessment, the Opposition Division concludes that even a highly attentive professional consumer is likely to confuse the marks or believe that the services in question come from the same undertaking or, as the case may be, economically linked undertakings.

Indeed, considering that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (C-39/97, ‘Canon’, EU:C:1998:442, § 30), the relevant consumers may think that the contested mark is as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 10 602 886. 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

Christian RUUD

Adriana VAN ROODEN

Justyna GBYL

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.