OPPOSITION No B 2 691 775

Full On Net, S.L., Hermanos García Noblejas Nº 41 4º Dcha, 28037 Madrid, Spain (opponent), represented by Doñaque & Asociados, S.L., Conde de Xiquena, 9, piso 1, pta. D, 28004 Madrid, Spain (professional representative)

a g a i n s t

Semantix Språkcentrum AB, Box 10059, 10055 Stockholm, Sweden (applicant), represented by Otmore AB, Kungsportsavenyn 10 6 tr, 41136 Göteborg, Sweden (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 775 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 14 965 743. The opposition is based on Spanish trade mark registration No 3 563 442. 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 on which the opposition is based are the following:

Class 9:        Apparatus for the reproduction, transmiting or recording of images and sounds; magnetic data media; sound recording discs; compact discs, dvd and others digital recording media; coin-operated mechanisms; cash registers; calculators; data processing equipment; computers; software; computer software applications, downloadable.

The contested goods and services are the following:

Class 9:        Computer software.

Class 38:        Telecommunication services.

Class 41:        Translation and interpretation; tuition.

Class 42:        Software development, programming and implementation; rental of computer hardware and facilities; it services; design services; hosting services and software as a service and rental of software; computer programming.

Some of the contested goods and services are identical to goods 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 directed at both the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Both marks are figurative marks.

The contested mark is composed of the element ‘SEMANTIX’ which has no meaning for the relevant public and therefore is considered distinctive, and of a figurative element that consists of a circle made up of triangles, all of which are blue except one, which is orange. The contested sign has no elements that could be considered clearly more dominant or more distinctive than other elements.

The earlier mark is composed of a figurative element in blue and yellow, below which the words ‘FULLONNET’ are depicted in blue title case letters, some of which are in bold. Below this, in much smaller characters, is the word ‘SEMANTYCS’ in yellow title case letters. The figurative element of the earlier trade mark and the element ‘FULLONNET’ are visually dominant, by virtue of their central position and large size.

As regards the element ‘FULLONNET’ of the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it 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). Therefore, due to the use of bold letters, this element will be broken down into the words ‘FULL’, ‘ON’ and ‘NET’. Taking into consideration that part of the relevant public will be professionals, this part of the public will understand the English word ‘NET’ as meaning ‘abbreviation for the internet’ (information extracted from Cambridge Dictionary on 12/05/2017 at http://dictionary.cambridge.org/dictionary/english/net). Bearing in mind that the relevant goods are related to the internet, this element is weak for the goods.

The rest of the elements of the earlier mark have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘SEMANT’, which appear in the second verbal element of the earlier mark and in the only verbal element of the contested mark. They differ, however, in the letters ‘YCS’ of the earlier mark, whose counterparts in the contested mark are the letters ‘IX’. Moreover, they also differ in the remaining verbal element of the earlier mark, ‘FULLONNET’, and in the figurative elements of the marks.

It has to be borne in mind that an examination of the similarity between the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details. The mere commonality in a string of letters in the verbal elements ‘SEMANTYCS’ of the earlier mark and ‘SEMANTIX’ of the contested sign will not catch the consumer’s attention, since these elements do not dominate the overall visual impressions created by the marks. The marks also include figurative elements and the earlier mark contains an additional verbal element and, even though this additional verbal element has a limited impact due to its low degree of distinctiveness, these elements further visually differentiate the marks from each other.

Although, in principle, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on consumers than the figurative component, this cannot be automatically assumed in every case, as the overall impressions of the signs have to be assessed on a case-by-case basis and by considering all the relevant circumstances. In the present case, the figurative element of the earlier mark is a distinctive and visually eye-catching element in this mark. The graphic depiction of that sign and the combination and arrangement of its elements have to be given appropriate significance when the visual impact of the marks is considered.

Considering the dominant elements of the earlier mark, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the letters ‘SEMANTI/Y’. However, the pronunciation differs in the sound of the additional letters ‘CS’ of the earlier mark’s verbal element ‘SEMANTYCS’ and in the sound of the letter ‘X’ of the contested mark. Moreover, they differ in the pronunciation of the verbal element ‘FULLONNET’ of the earlier mark. They also differ in their lengths and, most importantly, in their first elements. Generally, consumers tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the top of the sign the one that first catches the attention of the reader.

Considering all the above, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘NET’ of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods and services have been assumed to be identical to the opponent’s goods and the marks have some similarities because they have some letters in common, namely ‘SEMANT’, which appear in one of the verbal elements of the earlier sign and in the only verbal element of the contested mark. However, the signs have additional elements that mitigate the similarities arising from the letters they have in common. In particular, the figurative element and the additional word in the earlier mark are visually dominant and will certainly catch consumers’ attention.

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the opponent did not claim that its mark enjoys a particular degree of recognition in the market and, as seen above, the marks have been found, overall, to be similar to only a low degree.

Bearing in mind all the above, it can be safely excluded that the average consumer, who for the purposes of the assessment of likelihood of confusion is deemed to be reasonably well informed and reasonably observant and circumspect, will not directly confuse the signs. Furthermore, there is no reason to believe that the average consumer will perceive the marks as coming from the same undertaking or from economically linked undertakings.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, 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 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

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.

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.