OPPOSITION No B 2 338 021
Wolters Kluwer España, S.A., Calle Collado Mediano, 9, 28230 Las Rozas (Madrid), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Framos GmbH, Mehlbeerenstraße 2, 82024 Taufkirchen, Germany (applicant), represented by Grättinger Möhring Von Poschinger Patentanwälte Partnerschaft, Wittelsbacherstr. 2 b, 82319 Starnberg, Germany (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 338 021 is upheld for all the contested goods and services.
2. European Union trade mark application No 12 404 836 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 404 836. The opposition is based on, inter alia, European Union trade mark registration No 11 892 437. 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.
PRELIMINARY REMARK
In its writ dated 16/11/2016, the applicant argues the admissibility of the present opposition.
For the sake of clarity, the Opposition Division points out that according to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:
i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.
It is considered that in the present case the notice of opposition clearly identified the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, i.e. the European Union trade mark registration No 11 892 437. Thus, the opposition at hand is admissible at least insofar as it is based on this earlier right.
In light of the above and for the reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 892 437.
- The goods and services
The goods on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
The contested goods and services are the following:
Class 9: Electrotechnical and electronic components, namely semiconductors, sensors, microprocessors, signal memories, A/D converters, D/A converters, multipliers, integrated circuits, amplifiers, diodes, transistors, rectifiers, CMOS circuits, thyristors, power supplies; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cash registers; calculators; data processing apparatus; computer software; apparatus for the processing of images; the aforesaid goods not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid products relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media.
Class 42: Industrial analysis and research services; engineering services; design and development of computer hardware and software; research and development of new goods (for others); technical project studies; development and planning of electronic apparatus, for others; the aforesaid services not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid services relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the applicant’s list of goods and services 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 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 electrotechnical and electronic components, namely semiconductors, sensors, microprocessors, signal memories, A/D converters, D/A converters, multipliers, integrated circuits, amplifiers, diodes, transistors, rectifiers, CMOS circuits, thyristors, power supplies; the aforesaid goods not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid products relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media are included in the broad categories of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity in Class 9. Therefore, they are identical.
The contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cash registers; calculators; data processing apparatus; computer software; apparatus for the processing of images; the aforesaid goods not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid products relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media are included in the respective broad categories of the opponent’s scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cash registers; calculators; data processing apparatus; computer software; apparatus for the processing of images in Class 9. Therefore, they are identical.
Contested services in Class 42
The contested design and development of computer hardware and software; the aforesaid services not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid services relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media are involved in the process of ensuring a telecommunication connection, either by designing the technical equipment or the necessary program platform or by controlling and directing them. These services are closely linked to the opponent’s computers; computer software in Class 9. This is because manufacturers of computers and software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.
The remaining contested services, i.e. industrial analysis and research services; engineering services; research and development of new goods (for others); technical project studies; development and planning of electronic apparatus, for others; the aforesaid services not being for use in the field of radio-frequency identification technology and transponders; all the aforesaid services relating to image processing systems, none of them relating to field of publishing or to the field of printed and digital media are various scientific and technology-related activities which are concerned with research and experimental development and contribute to the generation and business, dissemination and application of scientific and technical knowledge. These services include mainly services provided by persons and rendered by means of using different tools such as the opponent’s scientific, surveying, weighing, measuring, checking (supervision) apparatus and instruments, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers etc. These are in particular services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological field. Therefore, these goods and services are considered similar to a low degree, since they may coincide in distribution channels, relevant public and producers or providers, respectively.
- 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, some of the goods found to be identical or similar to various degrees are directed at public at large, whereas some of them such as sensors, microprocessors in Class 9 target a professional public exclusively. The latter also holds true for the services at stake. Therefore, with respect to these goods and services, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
The public’s degree of attentiveness, irrespective of whether the general public or the professional public is concerned, may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. Some of those goods are regularly purchased and some are only acquired on an infrequent basis for a very specific purpose.
- The signs
| SMARTECA | |
|
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 is a word mark composed of the term ‘SMARTECA’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The contested sign is a figurative mark composed of a blue device made up of a triangle placed beneath a circle, followed by the sequence ‘SMARTEK’ written in a fairly standard blue typeface in lower case letters. Underneath the latter, at the bottom right, appears the word ‘VISION’ written in a much smaller also fairly standard blue typeface in lower case letters. In principle, figurative elements of signs have a lesser impact in their overall impressions than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components. In light of the above, the Opposition Division considers the word ‘SMARTEK’ with the most impact, as it is significantly more eye-catching, compared to the term ‘VISION’ which remains secondary due to its much smaller size and lower position and the figurative element, which, as explained, plays a lesser role in indicating/recollecting the sign.
Neither of the marks, as a whole, has any meaning in the relevant territory and, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, insofar as the contested sign is concerned, it cannot be disregarded that a part of the relevant public will dissect the element ‘SMART’ and so it will be understood in relation to the relevant goods and services as operating as if by human intelligence by using automatic tools (see Collins English Dictionary online). Thus, for this part of the relevant public, this element is considered at least weak in relation to the goods and services at stake. The same holds true insofar as the suffix ‘-TEK’ is concerned, which is at least allusive in relation to the goods and services at stake as it might be perceived as a reference to technology. For the sake of completeness it should be mentioned that the verbal element ‘VISION’ will be understood by at least a part of the relevant public as the ability or an instance of great perception, especially of future developments (see Collins English Dictionary online). Consequently, for this part of the relevant public it is considered slightly laudatory in relation to any goods or services, since it makes a reference to the future, i.e. that the goods and/or services have been made or rendered, respectively, with a vision. In any case, this verbal element plays secondary role in the comparison for the reasons set forth above.
The Opposition Division does not concur with the opponent’s allegations that the above reasoning may apply insofar as the earlier mark is concerned. Indeed, it is not reasonable to assume that the relevant public will dissect the element ‘SMART-’ from ‘-ECA’ since the suffix ‘-ECA’, or even grasped as ‘-TECA’ of the mark ‘SMARTECA’ neither has a concrete meaning nor is it anyhow allusive.
Visually, the signs coincide in the sequence of letters ‘S-M-A-R-T-E-**/*’, which forms almost all of the earlier mark and nearly the entire element with the most impact (‘smartek’) of the contested sign. Moreover, the fact that the element that the signs have in common, ‘SMARTE’, forms the beginning of the signs under comparison is especially important, since the consumer reads from left to right or from top to bottom and will perceive this element first. The signs differ in the endings of the common element, i.e. ‘CA’ vs ‘K’ and the additional figurative element of the contested sign, which, together with the verbal element ‘VISION’, play a secondary role for the reasons outlined above. Regarding the typeface in which the verbal elements of the contested sign are depicted, this stylisation is fairly standard and will not divert the consumer’s attention away from the elements it seems to embellish.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘SMARTE’. The pronunciation differs in the sound of the last letters, /CA/ vs /K/. Having said that, it should be mentioned that at least part of the relevant public will pronounce the letter ‘C’ of the earlier mark as ‘K’ which, obviously, will make the marks even more similar. Due to the much smaller typeface and its less prominent position, consumers are unlikely to pronounce the word ‘VISION’.
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 contested sign. Although the public in the relevant territory will perceive the meaning of the contested sign, as explained above, the earlier mark 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.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods and services have been found partly identical and partly similar to different degrees. The earlier mark has a normal degree of distinctiveness. The signs are visually similar to an average degree and aurally similar to a high degree, whereas conceptually the signs are not similar. The relevant public is the public at large and/or the professional public whose level of attention varies from average to high.
The Opposition Division acknowledges that the element ‘SMART’ of the contested sign is weak, however, the second element ‘TEK’ is not more distinctive and together they form the contested sign’s element which will be attributed the most important role within the contested sign, as explained above. The earlier mark is notably similar to this contested mark’s element with the most impact (‘SMARTEK’) and the remaining additional elements of the contested sign are not capable to add sufficient differences as to safely exclude the likelihood of confusion between the signs.
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 (Lloyd Schuhfabrik, § 26). Having said that, it is stressed that 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).
In view of all the relevant factors, it is considered that the similarity of the signs outweighs the low similarity between some of the goods and services. Consequently, there is a likelihood of confusion with respect to identical goods and similar services to all degrees, even for the professional public with a high level of attention.
Considering all of the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.
For the sake of completeness, it should be noted that as the earlier right, i.e. European Union trade mark registration No 11 892 437, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant 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
| Chantal VAN RIEL
|
Klaudia MISZTAL | Vita VORONECKAITE |
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.