OPPOSITION No B 2 585 241

Imeon Consulting, S.L., Calle Llagut Vinyet nº 1, Piso 1º, 08870 Sitges, Spain (opponent), represented by Derecho.com, Calle Ausias Marc, 7 2º, 08010 Barcelona, Spain (professional representative)

a g a i n s t

Imeon Engineering GmbH, Jesuitenmauer 24, 33098 Paderborn, Germany (applicant).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 585 241 is partially upheld, namely for the following contested services: 

Class 42: Writing of programs for data processing; computer software technical support services; maintenance and repair of software; design and development of computer hardware and software; computer hardware and software consultancy.

2.        European Union trade mark application No 14 179 782 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 179 782. The opposition is based on Spanish trade mark registration No 3 096 545. 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:        Science and technology services; technical services relating to engine.

The contested goods and services are the following:

Class 7:        Robots; machines and machine tools for treatment of materials and for manufacturing; motors, other than for land vehicles.

Class 9:        Computer hardware; software.

Class 42:        Writing of programs for data processing; computer software technical support services; maintenance and repair of software; design and development of computer hardware and software; computer hardware and software consultancy.

Contested goods in Class 7

The applicant seeks protection for goods in Class 7 (Class 7 being essentially the class for power-driven machines and their components) namely robots, machines and machine tools, for treatment of materials and for manufacturing as well as motors other than for land vehicles. The machines applied for in Class 7 are expected to be complex, very expensive and fully automatic and are used in thousands of industries.

The opponent´s services in Class 42 are mainly scientific and technological services. First, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case given that the goods and services have different natures, purposes and methods of use. They are clearly not in competition or complementary, and do not come from the same producers or providers. They target very different publics and are offered or commercialised via different channels. Therefore, the contested goods in Class 7 are dissimilar also to the opponent’s services.

Contested goods in Class 9

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 hardware is the physical parts or components of a computer, such as monitor, keyboard, computer data storage, graphic card, sound card, motherboard, and so on, all of which are tangible objects.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

The contested computer hardware; software are dissimilar to the opponent´s services in Class 42. In this particular case, even though a certain link cannot be denied due to the common technological field, the differences in nature and especially in the usual origin, as well as in the purpose, end users and distribution channels, clearly outweigh any such connection.

Contested services in Class 42

The contested writing of programs for data processing; computer software technical support services; maintenance and repair of software; design and development of computer hardware and software; computer hardware and software consultancy are similar to the opponent´s science and technology services; technical services relating to engine. These services have the same nature, require the same knowhow, they may target the same relevant public and are often provided by the same entities. Therefore, these services are considered to be similar.

2. The signs

IMEON	IMEON
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and the goods are dissimilar, while the services are similar

 

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

The rest of the contested goods 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 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

Richard BIANCH

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.