OPPOSITION No B 2 676 685

Motion Tech S.r.l., Via Sette Fratelli Cervi 5, Lesignano De'BagnI (Parma), Italy (opponent), represented by Andrea Sirimarco, Paseo de la Castellana 129 1º D 28046 Madrid, 28046 Madrid, Spain (professional representative)

a g a i n s t

Management Institut Dr. A. Kitzmann GbR, Am Germania Campus, Dorpatweg 10, 48159 Münster, Germany (applicant), represented by Bettina Clefsen, Kleine Johannisstr. 10, 20457 Hamburg, Germany (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 676 685 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against part of the goods and services of European Union trade mark application No 15 204 761, namely goods and services in Class 9 and 35. The opposition is based on European Union trade mark registration No 14 566 178.The opponent invoked Article 8(1)(a) and (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 the following:

Class 9: Machine-readable data carriers of all types with programs installed; computer programs and software of all kinds; makgnetic data carriers, namely magnetic tapes, magnetic discs and magnetic cards.

Class 35:Systematic ordering of data and information in computer databases for the Internet relating to the development, creating, programming, implementing, performance, production, distribution, sale, application, use, function, handling, modification, maintenance, rental, updating, design and outsourcing of computer programs and computer software.

Class 42: Creating, development and design of computer programs and software, in particular for commercial functions including accounting and checking, production and materials management, quality management and maintenance, sales, personnel management and project management, and general office functions, including word processing, electronic mail and archiving services; implementation, maintenance, rental, outsourcing and care of computer programs and software; updating and maintenance of computer software and computer programs, in particular programs relating to development, creating, programming, implementing, performance, production, distribution, sale, application, use, function, handling, modification, maintenance, rental, updating, design and outsourcing; technical consultancy with regard to the creating, development, use and application of computer programs and software; research in the field of computer programs and software.

The opponent restricted the extent of the opposition with communication to the Office of 27/03/2016. The said communication contained an obvious error as the restriction affected a Class of services not contained in the applicant´s list of goods and services. By communication to the Office of 15/04/2016, the opponent stated that the contested goods and services were:

Class 9: Computer software applications, downloadable; software and applications for mobile devices.

Class 35: Business consultancy and advisory services; business management consulting; management advice; personnel management consulting.

Contested goods in Class 9:

The contested computer software applications, downloadable; Software and applications for mobile devices are included in the opponent´s broader category of computer programs and software of all kinds. Therefore, they are identical.

Contested services in Class 35:

The contested business consultancy and advisory services; Business management consulting; management advice; personnel management consulting are similar to a low degree to the opponent’s systematic ordering of data and information in computer databases. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning and they are usually rendered by companies specialised in this specific field such as business consultants. Moreover, they gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire develop and expand market share. The opponent´s services provide, as a matter of fact, tools and ways to organize and to manage folders or information. Therefore, the conflicting services are at least similar to a low degree because they share the same providers and end users.

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 goods that have been found identical and the services found similar are addressed to the public at large and to professionals for the services listed in Class 35. The degree of attention will vary from average for the goods in Class 9 to above average for the services in Class 35 because of the financial involvement that they imply.

3. The signs

	KITZMANN
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 verbal element ‘Keymann’ included in the earlier sign has no dictionary meaning in the relevant territory and is therefore, distinctive for the relevant goods and services.

As regards the element ‘KEYMANN’ of the earlier mark, although it is composed of one verbal element, the English-Speaking part of the public may break the sign down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In this case and in certain circumstances the word  ‘Key’ could be considered  slightly less distinctive for computer programs and software of all kinds in as it may be seen as laudatory (as it is a  mean of access or control) or alluding to security.  As far as ‘Mann’ is concerned, it will be perceived as male human. Since the term is neither descriptive nor allusive for the relevant goods and services, it is distinctive.

The figurative devices of the earlier mark, which consist of three thick lines and a circular crescent arrow depicting a chart is fanciful and enjoy an average degree of distinctive character. Furthermore, account must be taken of the fact that the colours and the differing typefaces used in the earlier mark embellish the verbal element of the sign.

The contested sign ‘KITZMANN’ will be perceived by a great part of the relevant public as a common German family name and, therefore, it is distinctive for the conflicting goods and services. For the other part of public, the word is meaningless and also distinctive.

Neither of the signs has any element that could be considered clearly more dominant (eye catching) than the rest of the elements.

Visually, the signs coincide in the first and final letters of their verbal elements, ‘K’ and ‘MAN*’, notwithstanding the fact that they are written differently. However, in the earlier mark, the last letter is not the same as the contested sign’s ‘N’ but rather is depicted reversed, ‘И’, which is quite fanciful and establishes a significant visual gap between the signs.

They also differ in the letters ‘EY’ and ‘ITZ’, as well as the earlier mark’s figurative device and use of colours and differing typefaces.

As a matter of fact, the use of colours and differing typefaces in the earlier mark permit it to be broken down into two elements, ‘KEY’ and ‘MAN(И)’, thus giving the signs completely different structures and almost eclipsing the fact that the signs share a string of letters.

Therefore, the signs are similar to a low degree.

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 final string of letters ‛/MAN*/’, and in the initial letter ‘K’ presents identically in both signs.

The sounds of the letters ‘/EY/’, on the one hand and of the string of the consonants ‘/TZ/’, on the other, create different aural experiences. While ‘/EY/’ may be pronounced as /i/ or /ei / depending on the language of the relevant territory, ‘/ITZ/’ will sound as ‘/itc/’, introducing a differentiating aural element between both marks.

Since ‘/KEY/‘ in the earlier mark and ‘/KITZ/’in the contested sign will each be the first string of three or four letters to be heard, they will leave a stronger impression on the listener than the identical sound following. Therefore, it is concluded that the signs are aurally similar only to an average degree.

Conceptually, Reference is made to the previous assertions concerning the semantic content conveyed by the marks. Given the differing stylisation used in the earlier sign (and mentioned above break it down into two elements), it is reasonable to think that English Speakers will perceive the words ‘KEY’ and ‘MAN’ that is,  a man who plays a leading or important role in a group. The figurative element of the chart contained in the earlier mark will be understood by the relevant public as such. On the other hand, the contested sign might be perceived as a family name by a great part of the relevant public. In those cases, the signs are conceptually dissimilar.

 

For the part of the public that perceives both signs as invented words, neither of the signs has a meaning for the 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 claimed that the earlier trade mark enjoys enhanced distinctiveness because of its reputation but did not file any evidence in order to prove such a claim.

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

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 (recital 8 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).

In the present case, the goods are identical and the services are similar to a low degree. Moreover, the signs are visually similar to a low degree, aurally similar to an average degree and conceptually dissimilar or not conceptual assessment can be done

The obvious similarity between the signs that comes from their share letters, their initial ‘K’ and the similar ending ‘MAN*’, is clearly outweighed by the striking differences, that are sufficient to enable the relevant public to immediately distinguish between the signs, despite the fact that the goods at issue are identical and that the earlier mark is endowed with an average degree of inherent distinctiveness. The degree of attention that the relevant public, whether the general public or professionals, will have at the moment of choosing the goods and services in question must be given due consideration. Any likelihood that the average consumer might perceive the goods marketed under the conflicting signs as originating from the same undertaking, or economically linked undertakings, can be safely ruled out.

Considering all the above, there is no likelihood of confusion and the opposition must be rejected in its entirety

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs and the services are obviously not identical.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ric WASLEY

Alexandra APOSTOLAKIS

Richard BIANCHI

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.