OPPOSITION No B 2 684 085

Cybernetica AS, Mäealuse 2/1, 12618 Tallinn, Estonia (opponent), represented by Patendibüroo Käosaar OÜ, Tähe 94, 50107 Tartu, Estonia (professional representative)

a g a i n s t

Fritz Bastarz, Inselwelt 11/c, 7093 Jois, Austria (applicant), represented by Saxinger Chalupsky & Partner Rechtsanwälte GmbH, Edisonstr. 1 / WDZ 8, 4600 Wels, Austria (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 684 085 is partially upheld, namely for the following contested goods and services:

Class 9:        Recorded content; information technology and audiovisual equipment.

Class 42:        IT services; software development, programming and implementation; hosting services and software as a service and rental of software; IT consultancy, advisory and information services; computer software design and updating; updating and adapting of computer programs according to user requirements.

2.        European Union trade mark application No 15 038 557 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 038 557. The opposition is based on European Union trade mark registration No 11 857 877. 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:        Secure computer software; secure multiparty computation software; databases; data encryption apparatus; data encryption software.

Class 35:        Computerised database management; data entry and data processing; systemization of information into computer databases.

Class 42:        Design and development of databases; encryption, decryption and authentication of data, information and messages.

The contested goods and services are the following:

Class 9:         Scientific research and laboratory apparatus, educational apparatus and simulators; recorded content; information technology and audiovisual equipment.

Class 41:        Education, entertainment and sports; education and instruction; educational services provided to industry; training in the field of communication technologies.

Class 42:        IT services; software development, programming and implementation; hosting services and software as a service and rental of software; IT consultancy, advisory and information services; computer software design and updating; updating and adapting of computer programs according to user requirements.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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

The contested recorded content includes different materials, such as electronic data and software, maintained on a memory device. It overlaps with the opponent’s data encryption software to the extent that the latter can be recorded. Therefore, they are identical.

The contested information technology and audiovisual equipment includes, as a broader category, the opponent’s data encryption apparatus. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested scientific research and laboratory apparatus, educational apparatus and simulators are apparatus used for scientific research and devices that enable the reproduction or the representation under test conditions of phenomena that are likely to occur during actual performance. The opponent states that research data are highly confidential and encryption apparatus and software are used to ensure that research data remain confidential. However, this does not lead to the automatic conclusion that the opponent’s goods in Class 9 are similar to the above-indicated contested goods. Even though data encryption software can be used in some scientific research or laboratory apparatus, these goods are not complementary because they do not target the same public. Moreover, their producers are not the same and nor are their distribution channels, and they do not have the same purpose. The same applies to the opponent’s services in Classes 35 and 42. Therefore, the above-indicated contested goods are considered dissimilar to the opponent’s goods and services in Classes 9, 35 and 42.

Contested services in Class 41

The contested education; education and instruction; educational services provided to industry; training in the field of communication technologies consist of all forms of education-related services provided to individuals to develop their mental faculties and to transmit knowledge or understanding in relation to particular topic(s). Even considering that these services may target not only the public at large, but also companies and professionals in the field of communication technologies, they do not have the same providers as the opponent’s goods in Class 9 and services in Classes 35 and 42, which are very specific technical goods and services usually provided by specialised companies. Moreover, they have different purposes, end users and distribution channels and are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

The contested entertainment and sports include, in general, services intended to amuse or divert, as well as the organisation of sports competitions of any kind, providing facilities for sport, etc. They have different natures and purposes, relevant consumers, origins and distribution channels from the opponent’s goods in Class 9 and services in Classes 35 and 42, which are related to data encryption, specific software and databases. Therefore, they are dissimilar.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s design and development of databases. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested software development, programming and implementation; computer software design and updating; updating and adapting of computer programs according to user requirements include, as broader categories, or overlap with the opponent’s design and development of databases. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested hosting services and software as a service and rental of software; IT consultancy, advisory and information services are technical services related to programming and related rental, consultancy, advisory and information services. They are considered similar to the opponent’s design and development of databases, since they may have the same origin and relevant consumers, can be distributed through the same channels and can be complementary to each other.

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 found to be identical or similar are directed at the public at large as well as at a specialised public with specific knowledge and expertise within the field of IT. Bearing in mind that (at least some of) the goods and services are rather specialised, the degree of attention may vary from average to higher than average, depending on, for example, the type or cost thereof.

3. The signs

	SHAREDMIND
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs will be perceived as meaningful in certain territories, for example in those countries where English is understood. Therefore, the Opposition Division finds it appropriate to focus comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark consisting of the word ‘sharemind’ in slightly stylised orange lower case letters and, above the letter ‘i’, a much smaller figurative element of a circle made up of three black segments. The contested sign is a word mark, ‘SHAREDMIND’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is in upper or lower case characters.

Even though the earlier mark, ‘sharemind’, and the contested sign, ‘SHAREDMIND’, are both depicted as one word, the relevant consumers will break them 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, the relevant consumers will perceive the words ‘share’ in the earlier mark and ‘SHARED’ in the contested sign (the latter being the past participle of the word ‘share’) as referring to ‘have a portion of (something) with another or others; post or repost (something) on a social media website or application’ and the word ‘mind’ in both signs as referring to ‘a person’s ability to think and reason; the intellect’ (information extracted from Oxford Dictionaries on 17/05/2017 at http://www.oxforddictionaries.com/).

In the light of these definitions, the semantic content conveyed by the earlier mark, ‘sharemind’, and the contested sign, ‘SHAREDMIND’, is that of sharing thoughts and ideas or the exchanging of thoughts. Since the relevant goods and services may be involved in providing means for spreading, delivering or accessing information, the expressions ‘sharemind’ and ‘SHAREDMIND’ will be perceived as allusive of certain characteristics of these goods and services (e.g. as alluding to the idea that they are a means for sharing information). Therefore, the distinctiveness of the verbal element ‘sharemind’ of the earlier mark and the contested sign, ‘SHAREDMIND’, is considered lower than average.

The figurative element of the earlier mark is decorative in nature, since it will be perceived as a simple figurative depiction of a dot above the letter ‘i’. Having regard to the fact that, 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, the verbal element ‘sharemind’ will be attributed the most trade mark significance in the earlier mark by the relevant consumers. Moreover, due to its size and colour, it is the most dominant (visually eye-caching) element of the earlier mark.

Visually, the signs coincide in the sequence of letters ‘SHARE*MIND’, which forms the entire verbal element of the earlier mark, ‘sharemind’, and the first five letters of the first word and the whole of the second word of the contested sign, ‘SHAREDMIND’. The signs differ in the sixth letter, ‘D’, in the middle of the contested sign and in the colours and figurative element of the earlier mark.

Although, as correctly pointed out by the applicant, consumers will perceive the earlier mark as a whole, considering the subordinate nature of the figurative element in the overall composition of the mark, the relevant consumers will pay less attention to this element and focus on the most dominant element, ‘sharemind’. Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincide in the sound of the letters ‘SHARE*MIND’, present identically in both signs. The pronunciation differs in the sound of the sixth letter, ‘D’, of the contested sign. The figurative element of the contested sign will not be referred to verbally by the relevant public and so does not have any impact on the aural comparison.

The applicant points out the phonetic difference between the two marks, which arises from the letter ‘D’ in the contested sign and makes the contested sign sound like two words, whereas the earlier mark would be pronounced as one word. However, having regard to the fact that both signs will be perceived as consisting of two meaningful words (as explained above), the Opposition Division considers that both marks will be pronounced as two words by the relevant English-speaking consumers. Therefore, the addition of one letter, ‘D’, at the end of the first word of the contested sign will not result in any significant aural differences between the marks.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The mere fact that the word ‘share’ is used as a past participle in the contested sign makes no difference to the concept that this sign conveys. Therefore, the signs are considered virtually identical conceptually.

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. Considering what was stated above in section c) of this decision regarding the meaning of the verbal element of the earlier mark in relation to the goods and services in question, the distinctiveness of the earlier mark must be seen as lower than average.

5. 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).

As concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services, and they target both the public at large and professional consumers, whose degree of attention may range from average to higher than average.

The visually dominant verbal element of the earlier mark is fully reproduced in the contested sign. Therefore, as explained in section c), the signs are considered visually similar to at least an average degree, aurally similar to a high degree and virtually identical conceptually. The degree of distinctiveness of the earlier mark is lower than average due to the allusive nature of the word ‘sharemind’.

The differences between the signs, confined to one letter placed in the middle of the contested sign and to the decorative figurative element and colours of the earlier mark, are considered insufficient to counteract the similarities between the signs and to enable the relevant consumers to safely distinguish between them, even when their degree of attention in relation to the goods and services in question is higher than average.

Taking into account the abovementioned principle of interdependence and the fact that even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 857 877. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) 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)(b) 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 will 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

Judit NÉMETH

Rasa BARAKAUSKIENE

Ana MUÑÍZ RODRÍGUEZ

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.