OPPOSITION DIVISION
OPPOSITION No B 2 635 525
Konecta BTO, S.L., C/ Padilla, nº 17 – 1ª planta, 28006 Madrid, Spain (opponent),
represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain
(professional representative)
a g a i n s t
Blueco Benelux B.V., Beijerincklaan 3A, 1222TH Hilversum, the Netherlands
(applicant), represented by Gravendeel Advocaten, Oude Enghweg 2, 1217 JC
Hilversum, the Netherlands (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 635 525 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 14 702 039 for the word mark ‘Konnexus’. The
opposition is based on:
SpanishtrademarkregistrationNo 2 962 765ofthefigurativemark
and
Spanish trade mark registration No 2 872 698 of the figurative mark .
The opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
the Regulations currently in force, except where expressly indicated otherwise.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
Decision on Opposition No B 2 635 525 page: 2 of 8
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
Spanish trade mark registration No 2 872 698
The request was filed in due time and is admissible as the earlier Spanish trade mark
registration No 2 872 698 was registered more than five years prior to the relevant
date mentioned above.
On 31/11/2016 the opponent was given two months to file the requested proof of use.
The opponent did not submit any evidence concerning the use of the earlier Spanish
trade mark registration No 2 872 698 on which the opposition is based. It did not
argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expires, the Office will reject the opposition.
Therefore, as regards this earlier mark, the opposition must be rejected pursuant to
Article 47(2) and (3) EUTMR and Rule 22(2) EUTMIR (in the version in force at the
time of filing the request for proof of use).
Spanish trade mark registration No 2 962 765
The request for proof of use concerning Spanish trade mark registration
No 2 962 765 was considered inadmissible as it concerned a mark which, at the date
of publication of the contested trade mark, had not been registered for at least five
years.
Consequently, the examination of the opposition will continue in relation to earlier
Spanish trade mark No 2 962 765 only.
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.
Decision on Opposition No B 2 635 525 page: 3 of 8
a) The goods and services
The services on which the opposition is based are the following:
Class 35: Advertising; business management; business administration; office
functions; business management and business marketing consultancy; commercial
and business organization assistance and advisory services; business restructuring
consultancy for companies; commercial functions of public or private commercial or
industrial undertakings; business brokerage services; providing information in the
field of business consultancy; business report preparation; preparation and
conducting of trade fairs and conferences in the fields of business and business
management; advertising services; design of product campaigns, analysis, and
sales; consultancy for human resources development management and planning,
preliminary selection, selection, recruitment of personnel.
Class 38: Communications and telecommunications, including access to global
computing and digital communications networks via global computing networks;
communications by telephone and by computer terminals.
Class 42: Computing services, advanced equipment research and development
services.
The contested goods and services are the following:
Class 9: Application software; Interface software; Electronic data processing
equipment; Data processing software.
Class 35: Data processing services; Data processing management; Computer data
processing; Data entry and data processing; Information and data compiling and
analyzing relating to business management.
Class 38: Computer communication and Internet access; Transferring and
disseminating information and data via computer networks and the Internet;
Electronic data exchange; Electronic data exchange services.
Class 42: Software development, programming and implementation; Information
technology support services.
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 ‘including’, used in the opponent’s list of services in Class 38, indicates that
the specific 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Decision on Opposition No B 2 635 525 page: 4 of 8
Contested goods in Class 9
The contested application software; interface software; electronic data processing
equipment; data processing software are similar to the opponent’s communications
and telecommunications, including access to global computing and digital
communications networks via global computing networks; communications by
computer terminals given their complementary character; although their nature is
different,theirpurposeanddistributionchannelsarethesame(12/11/2008,
T-242/07, Q2web, EU:T:2008:488, § 24-26).
Contested services in Class 35
The contested data processing services; data processing management; computer
data processing; data entry and data processing; information and data compiling
relating to business management are included in the broad category of the
opponent’s office functions. Therefore, they are identical.
The contested information and data analyzing relating to business management are
included in the broad category of the opponent’s business management. Therefore,
they are identical.
Contested services in Class 38
The contested computer communication and internet access; transferring and
disseminating information and data via computer networks and the Internet;
electronic data exchange; electronic data exchange services are included in the
broad category of the opponent’s communications and telecommunications, including
access to global computing and digital communications networks via global
computing networks. Therefore, they are identical.
Contested services in Class 42
The contested software development, programming and implementation; information
technology support services are included in the broad category of the opponent’s
computing services. Therefore, they are identical.
b) 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 and services found to be identical or similar are
directed at the public at large and at business customers with specific professional
knowledge or expertise. The degree of attention may vary from average to higher
than average, depending on the price, sophistication, or terms and conditions of the
purchased goods and services, as well as the importance of these goods and
services for the activities of their users.
Decision on Opposition No B 2 635 525 page: 5 of 8
c) The signs
Konnexus
Earlier trade mark Contested sign
The relevant territory is Spain.
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).
In the present case, each of the signs under comparison is composed of one word
which will be seen in its entirety as neither of them contains clearly identifiable
components.
The Spanish-speaking public will perceive the earlier mark, ‘Konecta’, as referring to
‘conecta’ (pronounced in Spanish exactly in the same way as ‘konecta’), which is a
third person singular present form of the Spanish verb ‘conectar’ meaning ‘to join or
put in communication’ (things or people), ‘to establish communication between two
places’, ‘link two devices or systems together, or with one another, so that something
can flow between them, such as water, electricity, signals’ or ‘achieve good
communication with someone’ (information extracted from Diccionario de la Real
Academia Española used on 06/11/2017 at http://dle.rae.es/?id=ADJQXH0). The
relevant services are, to a lesser or greater extent, related to or may involve
communication (help to achieve, improve communication, etc.). Nevertheless, the
letter ‘K’, used in place of a letter ‘C’, colour and graphical representation give the
earlier mark some, although, not particularly distinctive character.
The contested sign, ‘Konnexus’, has no meaning as such in Spanish and is,
therefore, distinctive. It may evoke association with the Spanish word ‘conexión’
which is a noun meaning ‘a link, tie (…) of one thing with another’, ‘action and effect
of connecting’, point where the link between devices or systems is made’ (information
extracted from Diccionario de la Real Academia Española used on 06/11/2017 at
http://dle.rae.es/?id=ADjjIyE). ‘Conexión’ may also refer to a feeling of understanding,
a relationship based on common ideas or interests. However, these associations are
less evident than in the case of the earlier mark.
Visually, the signs coincide in the letters ‘KON*E***’ of which the three letters ‘KON’
are placed in the same position and the letter ‘E’ appears as the fourth letter of the
earlier mark and fifth letter of the contested sign. The signs differ in the additional
letter ‘N’ of the contested sign, being its fourth letter, and in the remaining three
letters of each sign, ‘CTA’ of the earlier mark and ‘XUS’ of the contested sign.
Furthermore, the signs differ in that the letters of the earlier mark are slightly stylised
and in blue colour. Although the similarities are placed in the beginnings of the signs
and the differences appear in their middle parts and endings, the ending ‘XUS’ and
the double ‘N’, present in the contested sign, are quite peculiar in Spanish and
influence the visual impression of the whole sign while the ending ‘CTA’ of the earlier
mark forms the word into a third person singular present form and, consequently, is
Decision on Opposition No B 2 635 525 page: 6 of 8
not striking for the Spanish consumer. Because of this, the differences are
immediately perceivable in the present case.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘KONE***’
since the double letter ‘N’ of the contested sign will be pronounced in the same way
as a single ‘N’. The pronunciation differs in the sound of the ending letters of the
signs (‘CTA’ versus ‘XUS’). Nevertheless, for the reasons explained in the visual
comparison, the differences are more striking than the coincidences.
Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For the relevant Spanish-speaking public the earlier
mark ‘Konecta’ immediately conveys the message: ‘connects’.
The contested sign, ‘Konnexus’, may evoke association with the Spanish word
‘conexión’ (‘connection’). However, this association is not so clear as in the case of
the earlier mark since there are more differences between ‘Konnexus’ and ‘conexión’
than between ‘Konecta’ and ‘conecta’.
Therefore, the signs are conceptually similar to a low degree.
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
distinctiveness per se. Considering what has been stated above in section c) of this
decision, the earlier mark is not particularly distinctive for all the services in question.
e) Global assessment, other arguments and conclusion
Taking all the above into account and bearing in mind that the earlier mark is not
particularly distinctive for the relevant public, the Opposition Division finds that,
despite the identity and similarity of the goods and services, the differences between
the signs are clearly perceptible and sufficient to enable consumers to safely
distinguish between the marks.
For the sake of completeness, it should be noted that the distinctiveness of the
earlier mark is not higher in relation to the services which were not compared.
Therefore, the outcome would not be different even if any of these services were
found similar or identical to the contested goods or services.
Decision on Opposition No B 2 635 525 page: 7 of 8
The opponent refers to previous decisions of the Office to support its arguments.
However, the Office is not bound by its previous decisions, as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case.
The previous decision of 27/03/2015, B 2 330 226, referred to by the opponent,
concerned a different contested sign and, therefore, is not relevant to the present
case.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Begoña URIARTE
VALIENTE
Justyna GBYL Anna BAKALARZ
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
Decision on Opposition No B 2 635 525 page: 8 of 8
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.