OPPOSITION No B 2 664 384

Information Builders, Inc., 2 Penn Plaza, New York, New York 10121-2898, United States of America (opponent), represented by Wilson Gunn, 5th Floor, Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)

a g a i n s t

Is-Line GmbH, Edisonstr. 16, 85716 Unterschleißheim, Germany (applicant), represented by Sr Huebner – Munich Patentanwaltspartnerschaft mbB, Prinzregentenplatz 11, 81675 Munich, Germany (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 664 384 is upheld for all the contested goods and services, namely 

Class 9:        Computer software, in particular for controlling sensor elements and/or for evaluation of sensor signals.

Class 35:        Retailing and wholesaling in relation to computer software.

Class 41:        Providing of training, in particular in the field of computer software; Arranging and conducting of instruction, courses, seminars, workshops, lectures, in particular in the field of computer software.

Class 42:        Creation, implementation, installation, maintenance, care, updating and adaptation of software, in particular in the field of sensor systems and measuring technology.

2.        European Union trade mark application No 14 841 761 is rejected for all the contested goods and services. It may proceed for the remaining goods and services. 

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 841 761 namely against some of the goods and services in Classes 9, 35, 41 and 42. The opposition is based on European Union trade mark registration No 13 662 531 and European Union trade mark registration No 3 448 362. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 662 531.  

1. The goods and services

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

Class 9: Computer software; computer programs; downloadable electronic publications and manuals relating to computer software and computer programming.

Class 41: Training in the design, development and operation of computer software and computer programs and in computer programming; online publication of electronic publications and manuals (non-downloadable) relating to computer software and computer programming; information, advisory and consultancy services relating to all the aforesaid services.

Class 42: Computer programming services; design, development and operation of computer software and computer programs; software as a service [SaaS]; information, advisory and consultancy services relating to all the aforesaid services.

The contested goods and services are the following:

Class 9: Computer software, in particular for controlling sensor elements and/or for evaluation of sensor signals.

Class 35: Retailing and wholesaling in relation to computer software.

Class 41: Providing of training, in particular in the field of computer software; Arranging and conducting of instruction, courses, seminars, workshops, lectures, in particular in the field of computer software.

Class 42: Creation, implementation, installation, maintenance, care, updating and adaptation of software, in particular in the field of sensor systems and measuring technology.

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 ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Moreover, 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

The contested computer software [in particular for controlling sensor elements and/or for evaluation of sensor signals] is identically contained in both lists of goods. They are, therefore, identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and wholesaling in relation to computer software are similar to a low degree to the opponent’s computer software.

Contested services in Class 41

The contested providing of training, in particular in the field of computer software is include as a broader category the opponent´s training in the design, development and operation of computer software. As the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent´s services.

The contested arranging and conducting of instruction, courses, seminars, workshops, lectures, in particular in the field of computer software are similar to the opponent’s training in the design, development and operation of computer software and computer programs and in computer programming. The specific purpose of the conflicting services is the same as they all fall in the field of education and they are aimed to support or complement educational and training services. It cannot be excluded that these services are rendered by the same provider, have identical end users and are distributed through the same channels. In view of that, the Opposition Division deems that these services are similar.

Contested services in Class 42

The contested creation, implementation, installation, maintenance, care, updating and adaptation of software, [in particular in the field of sensor systems and measuring technology] are identically contained in both lists of services (including synonyms).  

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, some of the goods and services found to be identical or similar are directed at the public at large and others at business customers (i.e. creation, implementation of software)  that may need the assistance in the field of information technology and/or computing.

The degree of attention varies from average to high, as some of the goods concerned (e.g. the contested software for controlling sensor elements) and services (creation of software) are likely, due to their degree of sophistication and their cost, to be the subject of a more careful purchasing.

3. The signs

FOCUS	Focus on Design-In
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The common element ‘FOCUS’ will be perceived as meaning ‘to fix attention (on); concentrate’ by the relevant public. Very closed words with similar meanings exist in most of the relevant languages, for example ‘foco’ in Spanish and Portuguese, ‘fókysz’ in Hungarian, ‘Fuoco’ in Italian or ‘fókus’ in Slovak or Polish.  In the present case, the earlier trade mark as a whole has no direct meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, contrary to the applicant’s opinion, the distinctiveness of the earlier mark must be seen as average.

In the contested sign, the term ‘Design’ is an English word which is widely used in trade throughout Europe. The relevant European Union consumers will easily associate the meaning of ‘Design’ with the art of designing or the arrangement or pattern of elements or features of a work.

The element ‘Design’ can be considered somewhat weak for some of the contested goods and services, namely for those included in Class 42 (creation and design of software). However, although the relevant public is likely to grasp the individual meanings of the words ‘Focus’ and ‘Design’, the Opposition Division is of the opinion that the relevant consumers will not perceive the contested mark as a slogan but as a sequence of verbal elements some of which will be understood as English words; however, as a whole it will have no special meaning.

In addition, it has to be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (judgement of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165,§ 43). Consequently, it is irrelevant whether the conflicting word marks are depicted in lower or upper case letters.

The Opposition Division disagrees with the applicant´s assertion that the word ‘FOCUS’ does not comply with the minimum degree of distinctiveness expected for a mark. In this context the applicant also filed a list of international, national (German) and European Union trade marks for the element ‘FOCUS’ for Classes 9, 16 and 42 in order to support its argumentation and trying to prove that the term ‘FOCUS’ as a mark has been ‘exhausted’. However, this evidence is not adequate for proving that ‘FOCUS’ is perceived as a weak element. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the real situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks that include the element ‘FOCUS’. Under these circumstances, the applicant’s claims must be set aside.

Visually, the signs coincide in the word ‘FOCUS’ which is a distinctive element in both marks. Furthermore, it has to be noted that the earlier mark is completely contained in the contested sign. However, the signs differ because of the addition of the words ‘on Design-In’ in the contested sign.

Regarding the applicant´s argument that slogans are never dominated by one of its elements and must be perceived as a whole, it has to be said that the initial part of the sign is usually the most important one. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the relevant public, namely non-English-speakers, are unlikely to perceive the contested sign as a slogan.

Therefore, the signs are 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 as they share the sound of the distinctive word ‘/FOCUS/’. They differ in the additional sound of the words ‘/on Design In/’ of the contested sign that have no counterpart in the earlier mark.

The signs are aurally similar to an average degree.

Conceptually, the signs coincide in the meaning of the term ‘Focus’. While the earlier sign consists exclusively of this word, the contested sign also includes the concept of ‘Design’. Therefore, the signs are 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 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 average.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

In the present case, the goods and services have been found to be either identical or similar to different degrees and the conflicting signs are similar to an average degree from the visual and aural perspective while the conceptual perspective does not affect the assessment of the similarity of the signs.

The signs coincide in the word ‘FOCUS’, which constitutes the sole and distinctive element of the earlier mark, as explained in section c) of this decision, as well as playing an independent role as the first element of the contested sign. Taking into account the impact of the first element of signs, the differences between the signs are not sufficient to outweigh the visual and aural similarities and exclude a likelihood of confusion, even where the public’s degree of attention is enhanced.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the light of the foregoing, the degree of similarity between the signs at issue is sufficient to conclude that there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

As European Union trade mark No 13 662 531 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Richard BIANCHI

Alexandra APOSTOLAKIS

Ric WASLEY

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.