OPPOSITION DIVISION

OPPOSITION No B 2 811 845

Kuka Roboter GmbH, Zugspitzstr. 140, 86165 Augsburg, Germany (opponent),

represented by Birgit Maneth, Brienner Straße 29, 80333 Munich, Germany

(professional representative)

a g a i n s t

Fortech SRL, Meteor Street no 78/2, 3400 Cluj-Napoca, Romania (applicant),

represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate

Class 35: Retail services of computer software.

Class 42: Computer programming and computer software design;

providing information on design and development of computer

software, systems and networks; development of solutions for

computer applications software; website design; creating and

maintaining websites for smartphones and tablets; quality

checking and testing; testing of computer programs, software

and hardware; testing of telecommunication signals; website

usability testing services; services for the development of

methods of testing; consultancy on the testing of computer

services concerning electronic data storage; software

engineering services for data processing programs;

development and creation of computer programs for data

processing; server administration; management of websites

and online hosting for others; graphic design; design and

graphic arts design for the creation of web pages on the

internet; computer software programs for electronic language

translation dictionaries and databases; design and

development of electronic language translation dictionaries

and databases; installation, implementation, maintenance and

including computer system design and development for third

parties; information technology consulting; computer software

development for others; technical project planning;

development of educational materials for third parties in the

field of computer software applications’ development and use

and in the field of using of business and commercial activities

on computer software applications; consulting services on

cloud computing; programming of operating software for

accessing and using a cloud computing network; technical

support services, including remote and on-site infrastructure

services; conducting of high-level operating systems and

cloud platforms.

2. European Union trade mark application No 15 599 376 is rejected for all the

above services. It may proceed for the remaining services.

3. Each party bears its own costs.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

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.

a) The goods and services

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

An interpretation of the wording of the lists of goods and services is required to

determine their scope of protection.

The terms ‘including’ and ‘particularly’, used in the applicant’s and opponent’s lists of

goods and services, indicate that the specific services are only examples of items

included in the category and that protection is not restricted to them. In other words,

has the same function as ‘including’ and ‘particularly’, see a reference in judgment of

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR,

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 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 retail services of computer software are similar to a low degree to the

opponent’s computer programs, recorded.

The contested business analysis, research and information services; consultancy on

market research and market studies are provided by consultants or specialised

companies, which analyse their clients’ markets and provide all the necessary

information and advice to help them develop a business or marketing strategy to

achieve the business goals of their clients or to maximise the sales or market

presence of their products and services. Therefore, they are dissimilar to all the

opponent’s goods in Classes 7 and 9, which are essentially industrial robots,

analysis and research, they have clearly different purposes and methods of use.

Furthermore, the contested services and the opponent’s goods and services are

distribution channels. They are not complementary to or in competition with each

other and the relevant publics are completely different. The opponent’s arguments in

The same conclusion holds true for the contested compilation of information into

computer databases; systemisation of information into computer databases, which,

despite the possible use of computers, databases and/or software in accomplishing

such activities, are administrative and clerical tasks falling within the broader

category of office functions. They are neither part of nor related to design and

development of computer software. Therefore they are dissimilar to all the opponent’s

and upgrading of computer software; software engineering services for data

dictionaries and databases; design and development of electronic language

translation dictionaries and databases; computer software development for others;

programming of operating software for accessing and using a cloud computing

network; mobility software services, namely development of software for mobile

applications including custom, packaged or hosted client, client/server, and cloud-

based solutions, including support for all the aforesaid services are included in the

broad category of, or overlap with, the opponent’s design and development of

computer software. Therefore, they are identical.

The contested quality checking and testing; technical project planning; testing of

telecommunication signals; services for the development of methods of testing are

included in the broad category of, or overlap with, the opponent’s scientific and

technological services. Therefore, they are identical.

The contested providing information on design and development of computer

software, systems and networks; it security, protection, consultancy, advisory and

information services; information technology (it) consultancy; information technology

consulting; consulting in computers, computer systems and computer systems

design; computing services, including computer system design and development for

third parties; consulting services on cloud computing are similar to a high degree to

the opponent’s design and development of computer hardware and software. They

have the same purpose or similar purposes, can have the same method of use and

are typically offered in combination with each other, even where they are not

complementary. Furthermore, they target the same relevant public through the same

server administration; management of websites and online hosting for others;

installation, implementation, maintenance and repair services in the field of computer

management services for monitoring, administration and management of public and

private cloud computing it and application systems; conducting of high-level

nature as the opponent’s services) that can have the same method of use and the

same providers as the opponent’s design and development of computer hardware

and software. Furthermore, they target the same relevant public and can be offered

in combination with each other. They may also have the same distribution channels.

Therefore, they are similar.

In the software development business, it is not unusual for companies offering such

the contested graphic design, development of educational materials for third

parties in the field of computer software applications’ development and use and in

is typical in this market so as to offer clients or companies contracting such services

‘turnkey’ projects. Therefore, the contested development of educational materials for

third parties in the field of computer software applications’ development and use and

in the field of using of business and commercial activities on computer software

applications; design and graphic arts design for the creation of web pages on the

internet are at least similar to a low degree to the opponent’s design and

development of computer software, as they can have the same providers and

relevant public.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be

In the present case, the services found to be identical or similar to varying degrees

are directed at business customers with specific professional knowledge or expertise

(telecommunications engineers, researchers, IT experts, etc.). The degree of

attention may vary from average to high, depending on the nature and type of

services concerned, and, in particular, due to the highly technical nature, specificity

and high price of some of these services, as well as the infrequency with which they

are purchased.

c) The signs

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,

finds it appropriate to focus the comparison of the signs on the English- and French-

speaking parts of the public such as the public in the United Kingdom, Ireland and

France.

The earlier sign consists of a single word, ‘FORTEC’, which has no meaning for the

relevant public.

The contested sign is a figurative mark consisting of the word ‘FORTECH’ written in

upper case letters using a standard dark blue font. This word is followed by a red

square that acts as a full stop.

The element ‘FORTECH’ of the contested sign has no meaning for the relevant

public and is, therefore, distinctive.

Visually, the signs coincide in the sequence of letters ‘FORTEC*’. They differ only in

the last letter of the contested sign, ‘H’, the red dot after it and the minimal stylisation

of the contested sign (the colours and font used).

Therefore, the signs are visually highly similar.

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

‛FORTEC’, present identically in both signs. In the relevant territory (English- and

French-speaking countries), the presence of the final ‘H’ in the contested sign will

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

d) 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

meaning for any of the goods and services in question from the perspective of the

trade marks themselves, or where the consumer makes a connection between the

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).

The contested services are partly identical or similar to varying degrees and partly

dissimilar. The earlier mark has a normal degree of distinctiveness.

As set out in section c), the visual and aural elements in common between the signs

are overwhelming and ultimately render the conflicting signs visually highly similar

and aurally identical.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the English- and French-speaking parts of the public and

therefore the opposition is partly well founded on the basis of the opponent’s

account the principle of interdependence, the contested trade mark must be rejected

even for those services found to be 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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party. According to

Article 109(3) EUTMR, where each party succeeds on some heads and fails on

different apportionment of costs.