OPPOSITION No B 2 679 440

ista Deutschland GmbH, Grugaplatz 2, 45131 Essen, Germany (opponent), represented by Rechtsanwalt Dr. Lindenberg, Garather Schlossallee 19, 40595 Düsseldorf, Germany (professional representative)

a g a i n s t

Schneider Electric Industries SAS, 35 rue Joseph Monier, 92500 Rueil-Malmaison, France (applicant), represented by Sandrine Barré (Schneider Electric Industries SAS, Service Propriété Industrielle – 38EE1), WTC – 5 Place Robert Schuman, 38050 Grenoble Cedex 9, France (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 679 440 is upheld for all the contested goods.

2.        European Union trade mark application No 15 095 342 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 095 342. The opposition is based on European Union trade mark registration No 13 728 753. 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 goods and services on which the opposition is based are, inter alia, the following:

Class 9:        Measuring, signalling and radio apparatus, equipment and instruments; heating cost distributors, calorimeters, heat meters, cold meters, water meters, electricity meters, gas meters, hygrometers and radio modules relating thereto; equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for the measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto; gas indicators; smoke alarms and fire alarms; computer hardware and computer software for the aforesaid goods; structural and replacement parts for all of the aforesaid goods.

Class 42:        Design and development of computer hardware and software for the household, sanitary, heating and energy sectors; energy consultancy; energy surveys and statistics; energy testing and certification of heating installations and buildings; water analysis; installation, maintenance and updating of computer software for equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto.

The contested goods are the following:

Class 9:        Software platform for use in asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; downloadable cloud computer software for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; downloadable software for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; downloadable software application for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; cloud computing software for use in asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; computer software for collecting and distributing data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices; none of the aforesaid relate to financial products, financial services, or financial transactions.

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 opponent’s computer software for the aforesaid goods [equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for the measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto] overlaps with the contested downloadable cloud computer software for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; downloadable software for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; downloadable software application for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; cloud computing software for use in asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; computer software for collecting and distributing data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices; none of the aforesaid relate to financial products, financial services, or financial transactions. Therefore, they are identical.

Design and development of computer software refers to the writing of computer programs, which are sets of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

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

Software platforms are structures that allow multiple software products, such as business applications, to be built within the same technical framework.

Therefore, the opponent’s design and development of computer software for the household, sanitary, heating and energy sectors in Class 42 are closely linked to the contested software platform for use in asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes; none of the aforesaid relate to financial products, financial services, or financial transactions in Class 9. This is because manufacturers of such software products also commonly provide software-related services. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered 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, most of the relevant goods and all the relevant services target business customers with specific professional knowledge or expertise (e.g. downloadable cloud computer software/downloadable software for information management, data collection and data analysis in the fields of asset optimization, industrial automation, machine diagnostics, and optimization of industrial, manufacturing and infrastructure management processes and design and development of computer software). However, the opponent’s goods in Class 9 and some of the contested goods that have been found identical (e.g. computer software for collecting and distributing data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices) may also be directed at the public at large. The degree of attention may vary from average to higher than average, depending on the nature and type of the goods and/or services concerned, how technical they are, their level of sophistication, price or the frequency with which they will be purchased.

3. The signs

ista	ISDA
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 marks to be compared are word marks composed of a single four-letter word. Neither ‘ista’ of the earlier mark nor ‘ISDA’ of the contested sign has any meaning in relation to the relevant goods and, in the case of the earlier mark, also in relation to the relevant services. Therefore, they are distinctive.

Visually, the signs coincide in ‘IS*A’, three letters out of a total of four in each sign. However, they differ in their third letters, ‘T’ and ‘D’. 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 ‘IS*A’, present identically in both signs. The pronunciation differs in the sound of the letters ‛T’ in the earlier mark and ‘D’ in the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the relevant public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 normal.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally similar to a high degree. The goods and services are partly identical and partly similar. The degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The first two letters and the last letters of the signs are identical. The only difference between the signs is in one letter, which is not sufficient to differentiate the marks, as it is in the middle of the signs, surrounded by identical letters and, therefore, will not catch the consumer’s attention.

In addition, 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).

It is the Opposition Division’s view that in the present case the differences are outweighed by the similarities and therefore consumers are likely to think that the goods and services come from the same undertaking or economically linked undertakings.

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 13 728 753. It follows that the contested trade mark must be rejected for all the contested goods.

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

Jorge ZARAGOZA GÓMEZ

Arkadiusz GORNY

Oana-Alina STURZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.