OPPOSITION No B 1 985 202

Fujitsu Technology Solutions LDA., Rua General Firmino Miguel, 6, Piso A, Green Park, 1600 Lisboa, Portugal (opponent), represented by J. Pereira da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

High Concept Holding B.V., Keulenstraat 7 B, 7418 ET Deventer, the Netherlands (holder), represented by Hekkelman Advocaten N.V., Prins Bernhardstraat 1, (Hoeck Oranjesingel 51), 6501 BB Nijmegen, the Netherlands (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 985 202 is upheld for all the contested goods and services.

2.        International registration No 1 076 175 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 076 175. The opposition is based on Portuguese trade mark registration No 362 835. 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:        Hardware, software, middleware, servers and scanners.

The contested goods and services are the following:

Class 9:        Computer software, computers, computer peripheral devices.

Class 37:        Repair, installation and maintenance of computers and computer peripheral devices.

Class 42:         Consulting services in the field of office and workplace automation; technical consultancy regarding the choice of computer devices for internal and external document workflow of business organizations and companies.

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 computers, computer peripheral devices are included in, or overlap with, the broad category of the opponent’s hardware. Therefore, they are identical.

Computer software is identically contained in both lists of goods (including synonyms).

Contested services in Class 37

The contested repair, installation and maintenance of computers and computer peripheral devices are similar to the opponent’s hardware. They can have the same producers, end users and distribution channels.

Contested services in Class 42

The contested consulting services in the field of office and workplace automation; technical consultancy regarding the choice of computer devices for internal and external document workflow of business organizations and companies are similar to the opponent’s goods in Class 9, especially hardware and software. These services are closely linked to hardware and software. This is because, in the field of computer science, producers of computers and/or software will also commonly render computer- and/or software-related services including various types of consultancy. Consequently, and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services may be the same. Furthermore, the goods and services may be complementary.

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 (from average to above average).

In the present case, the goods and services found to be identical or similar are directed at the public at large as well as professional and business consumers (some of the more complex software and the services in Class 42). The degree of attention will vary from average to higher than average depending on the complexity and price of the specific goods or services.

3. The signs

SMARTDOCS
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 is a word mark, ‘SMARTDOCS’.

The contested sign is a figurative sign containing two words, ‘smart’ and ‘Documents’. These words are written in slightly stylised lower case (‘smart’) and title case (‘Documents’) letters. In addition, the sign contains a figurative element made up of a core with five branching lines ending with circles. One of these circles forms the letter ‘o’ in the word ‘Documents’. The word ‘smart’ is in purple and both the word ‘documents’ and the figurative element are in blue. All of the elements are placed on a rectangular background.

The earlier mark is a word mark, ‘SMARTDOCS’. It will be perceived as one meaningless word by at least part of the public. However, it is not excluded that the remainder of the public will split this verbal element into ‘SMART’ and ‘DOCS’. The relevant public is Portuguese and, since neither of the abovementioned words is widely used in Portugal or is a basic English word, in principle, it cannot be considered likely that the relevant public will split the mark, identify these words and understand their meaning. On the other hand, it cannot be excluded that at least a part of the public, in particular when considering that the relevant goods and services are connected with information technology, a field in which English is used more often, will understand the meaning of the words ‘SMART’ and ‘DOCS’ (as an abbreviation of ‘documents’). For this part of the public, both words, namely ‘SMART’ and ‘DOCS’, are weak, as they allude to some characteristics of the goods: the word ‘smart’ stands for ‘(of a device) programmed so as to be capable of some independent action’ (information extracted from Oxford Dictionary on 09/08/2017 at www.en.oxforddictionaries.com/definition/us/smart) and the word ‘docs’, being, as explained above, an abbreviation of ‘documents’, means the plural of ‘a piece of written, printed, or electronic matter that provides information or evidence or that serves as an official record’ (information extracted from Oxford Dictionary on 09/08/2017 at www.en.oxforddictionaries.com/definition/us/document). For the part of the public that will not understand these English words, the marks have no elements that could be considered more or less distinctive than other elements.

Concerning the contested sign, the above explanation also applies to the word ‘smart’. Furthermore, the word ‘Documents’ of the contested sign will be easily understood by the relevant public, as the Portuguese equivalent is ‘documentos’ (i.e. the plural form of the Portuguese word ‘documento’, which means the same as the English word ‘document’; information extracted from Priberam Dicionario on 09/08/2017 at www.priberam.pt/dlpo/documento). As far as the distinctiveness of the contested sign is concerned, the above explanations shall apply accordingly.

In its observations of 25/11/2016, the holder claims that the figurative element is dominant. In the view of the Opposition Division, the figurative element is too small to be perceived as dominant. Furthermore, it is not placed in the central part of the contested sign.

Given the above, the signs under comparison have no elements that could be considered clearly more dominant than other elements.

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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal elements, ‘smart Documents’, of the contested sign will be attributed more trade mark significance than the figurative elements by the relevant consumers.

Visually, the signs coincide in their initial parts, ‘SMART’ and ‘DOC’, as well as in their last letters, ‘S’. The contested sign contains additional letters, ‘ument’, in its second verbal element. The signs also differ in the figurative element in the contested sign.

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

Aurally, the earlier mark will be pronounced in two syllables, ‘SMART/DOCS’, whereas the contested sign has four syllables: ‘SMART/DO/CU/MENTS’. Therefore, the overall rhythms and intonations of the pronunciations of the signs are similar. They coincide in several letters at their beginnings, ‘SMARTDOC’, and in their last letters, ‘S’. The pronunciation differs slightly in parts of the third and fourth syllables of the contested sign (i.e. in the letters ‛ument’), which have no counterparts in the earlier mark.

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. For the part of the public that understands the verbal elements of the signs and splits the earlier mark into two elements, both signs will be perceived to mean ‘smart documents’ (i.e. an efficient software/hardware solution for organising documents) For the rest of the public, neither of the signs as a whole has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

The figurative element of the contested sign does not have a specific concept and therefore cannot be taken into account within the conceptual comparison of the signs.

However, for the part of the public that understands the English words contained in the marks, as explained above, the marks would be conceptually linked through the concepts of ‘SMART’ and ‘DOCS’, being the abbreviation of ‘Documents’. In this case, they have the same meaning and, therefore, the marks are conceptually identical for this part of the public.

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 part of the public in the relevant territory (those who do not speak English). Therefore, the distinctiveness of the earlier mark must be seen as normal. For those who speak English, the verbal elements, as explained above, have meanings. In this case, the distinctiveness of the earlier mark must be seen as weak, due to the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the contested goods are identical and the contested services are similar to the opponent’s goods. The signs are visually similar to a low degree and aurally similar to a high degree. With regard to the conceptual comparison, either they are identical (for those who understand the words ‘SMART’ and ‘DOCS’) or the comparison is not possible (for those who do not understand these words). The earlier mark has a normal degree of distinctiveness for those who do not speak English. For the rest of the public, the distinctiveness of the earlier mark is weak. Furthermore, the public in question includes both the public at large and professional and business consumers, whose degree of attention will vary from average to higher than average. Therefore, the signs could be confused with each other, even by those who understand the verbal elements (i.e. for whom the earlier sign is of weak distinctiveness).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high 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).

Consumers tend to remember the similarities rather than the dissimilarities between signs. The first eight letters (‘SMARTDOC’) and the last letters (‘S’) of the signs under comparison are the same.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the Opposition Division finds that the similarities between the signs, that is, their coinciding letters (i.e. the initial letters, ‘SMART’, and the last letter, ‘S’), are not outweighed by the differences (i.e. the figurative element and additional letters, ‘ument’, of the contested sign).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for the relevant public indicated above (both those who understand and those who do not understand the words in question) and therefore the opposition is well founded on the basis of the opponent’s Portuguese trade mark No 362 835.

It follows that the contested trade mark must be rejected for all the contested goods and services.

In its observations, the applicant argues that ‘the relevant public will not be confronted with both trademarks’ as it ‘does and will not use the opposed trademark in Portugal’.

The Opposition Division notes that the protection of European Union trade marks covers the territory of the whole European Union, including Portugal. Under these circumstances, the applicant’s claims must be set aside.

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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rasa BARAKAUSKIENE

Michal KRUK

Judit NÉMETH

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.