OPPOSITION No B 2 639 535

Sfera Joven, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

w-tec AG, Dornbachstraße 1a, 61352 Bad Homburg, Germany (applicant), represented by Patentanwälte Dr. Knoblauch PartgmbB, Reuterweg 51-53, 60323 Frankfurt, Germany (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 639 535 is partially upheld, namely for the following contested goods:

Class 9:        Facilities management software; recorded and downloadable computer software and computer programs, in particular including apps for mobile radio apparatus; apps (computer software) for mobile terminals; computer software for controlling building environment and security systems; web application software; home and office automation systems comprising wired controllers, controlled devices, and software for lighting, security and safety; lighting control software for use in commercial and industrial facilities; data processing equipment and computers, apparatus for recording, transmission or reproduction of sound or images.

2.        European Union trade mark application No 13 867 759 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 867 759, namely against all the goods in Class 9 and all the services in Class 35. The opposition is based on European Union trade mark registrations No 4 563 581, for the figurative mark , and No 13 579 172, and Spanish trade mark registration No 2 991 443. The opponent invoked Article 8(1)(b) EUTMR.

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), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding 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 shall be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 4 563 581, on which, inter alia, the opposition is based.

The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 15/08/2016, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the above mentioned earlier trade mark. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition in relation to the earlier right for which the proof of use has been requested.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as regards European Union trade mark registration No 4 563 581.

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:

European Union trade mark registration No 13 579 172

Class 9:        Spectacles, lenses, accessories for optical goods; computers.

Spanish trade mark registration No 2 991 443

Class 35:        Retail sale in shops.

The contested goods and services are the following:

Class 9:        Light dimmers [regulators], electric; electric light switches; electric or electronic temperature sensors; apparatus for recording, transmission or reproduction of sound or images; electrical distribution systems, namely, power distribution panels; electronic controllers for reducing power consumption; facilities management software; recorded and downloadable computer software and computer programs, in particular including apps for mobile radio apparatus; apps (computer software) for mobile terminals; web application software; data processing equipment and computers; electronic publications (downloadable); graphics; mp3 files; downloadable image, audio and video files; downloadable sounds, downloadable images and data (including all the aforesaid being files); downloadable games and images for mobile terminals; computer software for controlling building environment and security systems; home and office automation systems comprising wired controllers, controlled devices, and software for lighting, security and safety; led and hid light controls; lighting control panels; lighting control software for use in commercial and industrial facilities; occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; photoelectric sensors; motion detecting equipment.

Class 35:        Advertising; data file administration; business management; business administration.

An interpretation of the wording of the applicant’s list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’, ‘including’ and ‘comprising’ indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Computers are identically included in both specifications.

The contested data processing equipment; apparatus for recording, transmission or reproduction of sound or images overlap with the opponent’s computers, as they can perform the same functions. Therefore, they are identical.

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs/software to operate and vice versa. Therefore, the contested facilities management software; recorded and downloadable computer software and computer programs, in particular including apps for mobile radio apparatus; apps (computer software) for mobile terminals; web application software; home and office automation systems comprising wired controllers, controlled devices and software for lighting, security and safety; computer software for controlling building environment and security systems; lighting control software for use in commercial and industrial facilities are similar to the opponent’s computers. Furthermore, they may also have the same consumers, distribution channels and sales outlets. Even though the contested goods are for specific purposes, the broad wording of the goods of the earlier right encompasses a range of fields and activities such as those covered by the contested goods. Therefore, they are considered similar.

The contested electronic publications (downloadable) graphics; MP3 files; downloadable image, audio and video files; downloadable sounds, downloadable images and data (including all the aforesaid being files); downloadable games and images for mobile terminals are recorded content. These goods are dissimilar to the opponent’s goods and services. They have different natures, purposes, methods of use and distribution channels. Furthermore, they are not in competition. The mere fact that the contested goods are used with computers and software is insufficient for a finding of similarity.

The contested light dimmers [regulators], electric; electric light switches; electric or electronic temperature sensors; electrical distribution systems, namely, power distribution panels; electronic controllers for reducing power consumption; led and hid light controls; lighting control panels; occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; photoelectric sensors; motion detecting equipment are very specific apparatus, equipment, instruments and elements related to light and electricity. Therefore, they do not have any link with the opponent’s goods in Class 9, as their nature and purpose differ. Their origin and distribution channels are not the same. Furthermore, they are not complementary or in competition. Therefore, they are considered dissimilar.

Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

Therefore, the contested light dimmers [regulators], electric; electric light switches; electric or electronic temperature sensors; electrical distribution systems, namely, power distribution panels; electronic controllers for reducing power consumption; electronic publications (downloadable) graphics; MP3 files; downloadable image, audio and video files; downloadable sounds, downloadable images and data (including all the aforesaid being files); downloadable games and images for mobile terminals led and hid light controls; lighting control panels; occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; photoelectric sensors; motion detecting equipment are dissimilar to the opponent’s retail services in Class 35.

Contested services in Class 35

The contested advertising; data file administration; business management; business administration fall under the category of business services. These services are performed to organise and run a business. They do not relate to the actual retail of goods but are preparatory or ancillary to the commercialisation of goods. When comparing these contested services with the opponent’s services in Class 35, the Opposition Division finds them dissimilar. The opponent’s services in Class 35 consist in sale services allowing consumers to conveniently satisfy different shopping needs at one stop. They differ in their nature and purpose, as the opponent’s services relate to the process of selling goods through different channels and the contested services focus on providing tools, expertise and information to carry out a business. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

These services also have nothing relevant in common with the opponent’s goods in Class 9. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

b)        Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services of earlier Spanish trade mark registration No 2 991 443 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as regards this earlier mark.

c)        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 and similar are directed at the public at large and at a professional public with specific knowledge or expertise. The degree of attention will vary from average to higher than average depending on the price, nature (i.e. whether or not they are specialised) and conditions of purchase of the goods and services.

d)        The signs

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 earlier mark features the verbal component ‘SFERA’ in lower case letters inside black slanted brackets.

The contested mark is a figurative mark consisting of the verbal element ‘rSPHERE’ in grey, the initial ‘r’ in lower case and the ‘SPHERE’ in upper case. Moreover, the initial ‘r’ is depicted with three diagonal lines above it and to the right.

Clearly, neither mark has any dominant element.

Visually, the signs are similar to the extent that they coincide in the letters ‘S*ER*’. However, they differ in the letter ‘F’ in the earlier mark and in the first letter ‘r’ and the letter combination ‘PH’ in the contested sign. They also differ in the last letters – ‘A’ in the earlier mark and ‘E’ in the contested sign – and in the stylisation of the contested sign.

Taking into account that the public will perceive both signs as a whole and not proceed to analyse their various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), the differing letters of the verbal elements could easily be overlooked and misheard by the average consumer, who will perceive them as a whole. Moreover, where a trade mark is composed of verbal and figurative elements, in principle, the average consumer will more easily refer to the goods in question by quoting the name than by describing the trade mark’s figurative element (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in the relevant territory, the pronunciation of the signs will coincide in the sound of the letters ‛SFER*’ insofar as a significant part of the relevant public, in particular the French- and Italian-speaking parts, will pronounce the phoneme ‘PH’ identically or very similarly to ‘F’. However, the pronunciation differs in the sound of the last letter in each case – ‘A’ in the earlier mark and ‘E’ in the contested sign – and in the sound of the first letter ‘r’ of the contested mark.

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

Conceptually, although the contested mark does not have a meaning as a whole, the relevant public will see the element ‘SPHERE’ in the contested mark, since a significant part of the public, in particular the English- and French-speaking parts, will perceive it as meaning ‘a round solid figure, or its surface, with every point on its surface equidistant from its centre’ (information extracted from https://en.oxforddictionaries.com/definition/sphere). The word ‘SFERA’ will also be perceived with the same meaning by a significant part of the public, in particular by the Italian-, Romanian- and Croatian-speaking parts. However, taking into account that the origin of both ‘SPHERE’ and ‘SFERA’ is the Latin ‘sphēra’ or Greek ‘sphaira’ and that there are, therefore, identical or very similar equivalents in many European Union languages, the Opposition Division considers that a significant part of the public in the relevant territory will perceive the elements as conceptually identical. The contested mark also contains a figurative element attached to the initial ‘r’. However, this element will be perceived rather as a purely figurative element without any specific concept.

To that extent, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

e)        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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

f)        Global assessment, other arguments and conclusion

The goods and services are partly identical and similar and partly dissimilar.

Visually, the signs are similar to the extent that they coincide in three out of the seven letters of the contested sign. Aurally, the signs coincide in the pronunciation of the letters ‛SFER*’. Furthermore, taking into account the Latin or Greek roots of the word ‘sphere’, which has led to this word’s adoption in many European languages, it is considered that, although there are some minor dissimilarities between the elements, they will be perceived as having the same meaning, namely ‘a three-dimensional closed surface such that every point on the surface is equidistant from a given point, the centre’ (information extracted from Collins Online Dictionary).

In addition, the Opposition Division considers that the differences between the signs at issue are only minor. The figurative element attached to the letter ‘r’ of the contested mark and the differences in the letters ‘A’ in the earlier mark and ‘r’ and ‘E’ in the contested mark are less noticeable than the similarities. Consequently, the relevant public will not pay particular attention to the differentiating figurative elements and the additional letter, but will instead focus on the verbal elements ‘SFERA’ and ‘SPHERE’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

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.