OPPOSITION No B 2 636 713

Exeura S.r.l., Via P. Alvares Cabrai (Edificio Manhattan), C.do Lecco, 7036 Rende, Italy (opponent), represented by Andrea Sirimarco, Paseo de la Castellana 129, 1º D, 28046 Madrid, Spain (professional representative)

a g a i n s t

Xerox Corporation, 45 Glover Avenue, Norwalk, Connecticut 06856, United States of America (holder), represented by Wilson & Berthelot, 22 rue Bergère, 75009 Paris, France (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 636 713 is partially upheld, namely for the following contested goods:

Class 9:                 Industrial printers; digital printers; industrial inkjet printers; printer hubs for industrial inkjet printers; all these products being designed for use with computers and computer-related industrial equipment.

2.        International registration No 1 255 149 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 255 149, namely against all of the goods in Class 9. The opposition is based on European Union trade mark registration No 11 391 927. 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 containing programs of all kinds; Computer programs and software of all kinds; Magnetic data carriers, namely magnetic tapes, magnetic discs and magnetic cards.

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 contested goods are the following:

Class 9:        Industrial printers; digital printers; industrial inkjet printers; printer hubs for industrial inkjet printers; all these products being designed for use with computers and computer-related industrial equipment; print heads; structural components of all the aforesaid products.

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 contested industrial printers; digital printers; industrial inkjet printers; all these products being designed for use with computers and computer-related industrial equipment are similar to the opponent’s software of all kinds. Despite the holder’s claims to the contrary, the opponent’s goods may be essential for the use of the contested goods and, therefore, these goods are complementary. Furthermore, they target the same public, may be produced by the same undertakings and distributed through the same channels.

The contested printer hubs for industrial inkjet printers; all these products being designed for use with computers and computer-related industrial equipment refer to hardware devices that enable multiple printers to be connected to a computer. They have a low degree of similarity to the opponent’s software of all kinds, as these goods also need software for their functioning and are, therefore, complementary. Furthermore, they may coincide in their distribution channels and relevant consumers.

The holder went to great lengths in arguing that the abovementioned contested goods are not similar to the opponent’s goods. In its opinion, they do not have the same purpose, are not manufactured by the same companies, do not target the same public, are not sold via the same channels and are not used ‘the ones with the others’. To support its claims, the holder filed as Exhibit 13 a list of attendees at Graph Expo 2016 (‘the largest print market in the world’) and as Exhibit 14 a list of computer storage companies obtained from Wikipedia. There is, however, nothing in the evidence filed that could serve to demonstrate that the goods concerned are dissimilar. Mere lists of companies do not show per se that the commercial origins of software and printers are different. Moreover, Exhibit 13 actually contains references to ‘Software: Workflow & Design/Prepress’ and lists companies containing ‘Software’ as part of their company names (see ‘Printers Software’ on page 52), which seems to suggest rather the contrary of the holder’s arguments. Therefore, in the absence of convincing arguments and evidence thereof, the holder’s claims must be set aside.

The remaining contested print heads and structural components of all the aforesaid products (i.e. for industrial printers; digital printers; industrial inkjet printers; printer hubs for industrial inkjet printers; all these products being designed for use with computers and computer-related industrial equipment; print heads) are structural and passive components of printers and of parts of printers, respectively. These goods are dissimilar to the opponent’s goods and services in Classes 9 and 42. They have different natures, purposes and methods of use, they are not necessarily complementary or in competition and they do not have the same providers and relevant public.

2. The signs

RIALTO	Rialto
Earlier trade mark	Contested sign

The earlier mark and the contested sign are word marks. In the case of word marks, it is the word as such that is protected and not its written form.

The signs are, therefore, identical.

3. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs are identical and the contested goods are partly similar to varying degrees and partly dissimilar to the opponent’s goods.

Given the identity of the signs and the varying degree of similarity between the relevant goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 391 927. It follows from the above that the contested trade mark must be rejected for the goods found to be similar to different degrees 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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 and directed against the remaining goods because the goods 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. 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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Anunciata SEVA MICO

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.