OPPOSITION No B 2 747 791
Núcleo de Comunicaciones y Control, S.L., Avenida de la Industria, 24, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Jo De Baerdemaeker, Gounodstraat 8/31, 2018 Antwerpen, Belgium (applicant).
On 14/06/2017, the Opposition Division takes the following
1. Opposition No B 2 747 791 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against all the services of European Union trade mark application No 15 385 073 for the word mark ‘Sherpa’. The opposition is based on Spanish trade mark registration No 2 187 342 for the word mark ‘SHERPA’. 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.
- The goods and services
With regard to the opponent’s goods in Class 9, the English translation submitted, systems for the treatment of information, namely supervision and control systems, requires some clarification in relation to the word ‘namely’. Since the original wording in Spanish reads sistemas para el tratamiento de la informacion y especialmente sistemas de supervision y control, the Opposition Division holds that the word ‘namely’ is not a correct translation of the Spanish word ‘especialmente’. This Spanish word can be correctly translated into English as ‘especially’.
Therefore, the Opposition Division considers that the opponent’s list of goods in Class 9 should be translated as systems for the treatment of information, especially supervision and control systems.
The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Therefore, the goods on which the opposition is based are the following:
Class 9: Systems for the treatment of information, especially supervision and control systems.
The contested services are the following:
Class 42: Design of typefaces.
Contested services in Class 42
The contested design of typefaces refers to the field of graphic design dedicated to the layout of letters (type) and specifically to the style, arrangement and appearance of the letters, numbers and symbols created during the process.
The opponent’s systems for the treatment of information are data processing systems for the collection, organisation, storage and communication of information.
The contested services and the opponent’s goods are dissimilar, as they have clearly different natures and purposes. They normally come from different manufacturers or providers and are distributed through different trade channels.
In its submissions of 28/02/2017, the opponent claims that ‘the contested services and the opponent’s goods present a functional relation because software and computer programs goods of Class 9 are essential to the design or generate of typeface or fonts of class 42’. The opponent also states that they ‘belong to the same market place (information technology) and may be developed by the same kind of undertakings available through the same distribution channels’.
Contrary to the opponent’s argument, the Opposition Division is of the opinion that it is not common for a company that provides the contested design of typefaces to also offer the opponent’s goods even if the latter are intended, as the opponent suggests, as ‘software and computer programs’. The contested service is provided by companies specialised in typography, which is a very specific field in graphic design and is carried out by graphic designers. This field is neither complementary to nor in competition with the field of activity related to the opponent’s goods. Therefore, the channels of distribution and marketing are also different.
The contested design of typefaces has nothing relevant in common with the opponent’s goods in Class 9. Whereas it is true that the same kind of software or computers can be used in the design of typefaces, this does not imply that there is a complementarity between these goods and the typeface design service that would lead consumers to think that the responsibility for the production of those goods or for the provision of this service lies with the same undertaking. In fact, nowadays consumers are used to the application of software in many fields of digital activity to simplify and speed up the related processes, as many activities, such as in the graphic, architecture, business and financial fields, are performed with the support of relevant software and computers. However, it cannot be considered a significant commonality, since software and computers are only supports to facilitate these activities, and are not their objects.
The opponent, in its submissions, also makes reference to the relationship between computers and software (Class 9), on the one hand, and computer programming (Class 42), on the other, mentioned in the EUIPO Guidelines (Guidelines for examination of European Union trade marks, Part C, Opposition, page 61). In this regard, the Opposition Division points out that this previous comparison referred to by the opponent is not relevant to the present comparison between the opponent’s systems for the treatment of information in Class 9 and the contested design of typefaces in Class 42, since the latter is not a ‘computer programming’ service. In fact, the contested design of typefaces, which, as explained before, relates to the graphic design field, is carried out by graphic designers who arrange words, letters, numbers and symbols, and not by engineers or IT experts as in the case of ‘computer programming’ services.
The opponent also refers, in its submission, to the Judgment of 29/09/2011, T-150/10, Loopia, EU:T:2011:552, § 36 and 43, in which ‘computer programming services’ in Class 42 and ‘Internet site services’ in Class 42 are compared. The Opposition Division believes that the judgment referred to by the opponent is not applicable to the present case, as it refers to different services. Moreover, while the judgment mentioned by the opponent refers to a comparison between only services in Class 42, the present opposition involves a comparison between goods (the opponent’s systems for the treatment of information in Class 9) and services (the contested design of typefaces service in Class 42), which have different natures by definition.
Therefore, the opponent’s arguments must be set aside as unfounded.
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 goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
IBARRA DE DIEGO
Angela DI BLASIO
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.