OPPOSITION No B 2 571 530

Eyeos, S.L., La Rambla 140, 4ºC, 08002 Barcelona, Spain (opponent), represented by Laia Torrents Homs, C. Provenza 286, 2° 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

South East Water Corporation, 20 Corporate Drive, Heatherton Vic 3202, Australia (holder), represented by Harrison IP Limited, Westminster Business Centre, 10 Great North Way, Nether Poppleton York YO26 6RB, United Kingdom (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 571 530 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 235 045, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 10 961 977. 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 the following:

Class 9:        Computer software; computer software; downloadable software; interface software; software for information processing; computer software for searching and data communication; VPN and WAN operating software; computer software; electronic publications; computer software for providing direct and remote access to computers, databases, networks, intranets and the internet.

Class 35:        Advertising and promotion provided using the internet and/or communications networks; promotion of goods and services via the internet and/or communications networks; purchase and exchange of goods and services for others by means of the transmission and dissemination of advertising messages via the internet and/or communications networks; providing online marketplaces for sellers and buyers of goods and services; rental of advertising space.

Class 38:        Telecommunications services; communication services; providing of telecommunications access and links to computer databases and to the internet via computers or any other devices; providing of access to online forums for the transmission of messages; chatrooms; providing of access to electronic sites; routing and connection and linking for telecommunications; data transmission and reception services via telecommunication means; electronic data communication; communication via the internet, optical fibres; voice mail services, data inboxes, electronic mail inboxes; datacasting services; email data services; instant messaging service; electronic and telecommunications transmission and reception of voice and data accessible via computer and telecommunications networks; IP servers; video and audio conferencing services; electronic and computerised bulletin boards; internet portal services.

Class 42:        Computer services; software design and development; hosting computer websites; search engines (providing -) for the internet; providing search engines for the internet; providing back-up computer programs and facilities; hosting of websites; cloud seeding; providing of cloud hosting; providing of temporary use of a non-downloadable computer interface in order to create an online personalised information service; providing of a non-downloadable computer interface containing a proprietary collection of information; providing use of a non-downloadable computer interface in order to provide information concerning a wide range of text, electronic documents, databases, graphics and audiovisual information; creation of information indexes with search functions, websites and other information sources relating to all the aforesaid; search engine services; data storage services; creation, development, assistance and maintenance relating to all the aforesaid.

The contested goods and services are the following:

Class 9:        Computer software and hardware for use with management, control and monitoring systems for water, waste and sewerage systems and for infrastructure and facility management and maintenance; computer software and hardware for configuring, monitoring, diagnosing, maintaining, and repairing data, equipment and infrastructure for water, waste and sewerage systems; computer hardware for data collection, tracking and sharing in relation to performance, history, operation and delivery of water, waste and sewerage; computer hardware and software for alarm monitoring analysis, asset tracking and regulatory compliance in relation to water, waste and sewerage systems.

Class 42:        Scientific, technological research and design services relating to water, waste and sewerage systems; industrial analysis and testing services in relation to water, waste and sewerage systems; hosting websites; information and advisory services relating to water analysis.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are specialised goods and services directed at specialist customers with specific professional knowledge or expertise. Although the goods and services of the earlier mark target both the general and the professional public, the goods and services of the contested sign target the professional public. In this case the relevant public for assessing likelihood of confusion is the professional public only.

The degree of attention is considered to be high given that the IT and scientific goods and services in question are technically highly sophisticated. Those relating to water, waste and sewage would also have implications for public health.

3. The signs

	ONEBOX
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).

As a preliminary remark it is noted that professionals in the IT field and scientific field are in general more familiar with the use of technical and basic English words than the general public and so will understand the words that make up the conflicting signs.

The earlier mark is a figurative mark with the verbal element ‘EYEBOX’, ‘EYE’ in light grey and ‘BOX’ in dark grey. Given this visual separation with colours the relevant public will easily identify the two words. ‘EYE’ is distinctive in relation to the goods and services at hand. ‘BOX’ may be considered allusive to, and therefore weak, for the goods at issue as relating to the container or the shape of the goods, and is distinctive for the services. The verbal element is preceded by a figurative element which is a green square-like shape, the top left and bottom right corners of which are rounded. In the centre there is a white circle and inside the circle there is dark grey spot. The figurative element, which may be perceived as a stylized box–shaped (square) eye, reinforces the concept in the words and is distinctive. No one element is more dominant than another in the earlier mark.

The contested sign is a word mark ‘ONEBOX’. The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, the words ‘ONE’ and ‘BOX’ will be identified by the relevant public. ‘ONE’ is a number and does not have any particular meaning in relation to the goods and services at issue and so is distinctive. The above considerations about the element ‘BOX’ apply also here.

The best case scenario for the opponent is when the coinciding element ‘BOX’ is considered to be distinctive. The Opposition Division finds it appropriate to first proceed on the basis of this scenario.

Visually the signs coincide in the distinctive element ‘BOX’ present at the end of the verbal elements. However, they differ in the distinctive verbal elements ‘EYE’ in the earlier mark and ‘ONE’ in the contested sign. The also differ with respect to the figurative aspect of the earlier mark, including the use of colour and the figurative element that has no counterpart in the contested sign.  

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to a below average degree.

Aurally, the signs coincide in the pronunciation of the distinctive element ‘BOX’ at the end of the signs where the impact is less, and differ in the pronunciation of the distinctive elements at the beginning of the signs, ‘EYE’ in the earlier mark and ‘ONE’ in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The contested sign as a whole has a meaning: ‘One Box’ as in a single box.  The contested sign as a whole has no clear meaning apart from the sum of its parts. The signs coincide conceptually in the distinctive element ‘BOX’ at the end of the marks. However the other distinctive components ‘EYE’ and ‘ONE’ also convey clearly different concepts.

Therefore, the signs are conceptually similar to an average degree.

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 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 (eighth recital of the CTMR). 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 and services are assumed to be identical, the signs are visually similar to a below average degree, aurally and conceptually similar to an average degree. The attention of the relevant consumer is high and the earlier mark has a normal degree of distinctive character.

Although the signs coincide in the distinctive element ‘BOX’, a likelihood of confusion does not exist for consumers since the additional elements are also distinctive, clearly perceivable and conceptually distinct. The conceptual difference is such that it eclipses the similarity that comes at the end of the signs where it has a lower impact.

Considering all the above, and in particular the high level of attention of the relevant public, there is no likelihood of confusion even assuming that the goods and services are identical. If there is no likelihood of confusion for those services where the coinciding element ‘BOX’ is distinctive, it follows that for the goods where it is considered weak, the likelihood of confusion is even more remote. This is because a coincidence in a weak element would lead to a lower level of similarity between the signs.

Therefore, there is no likelihood of confusion on the part of the relevant public and the opposition must be rejected.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tobias KLEE

Lynn BURTCHAELL

Martin EBERL

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.