OPPOSITION No B 2 765 405

Information Builders, Inc., 2 Penn Plaza, New York, New York 10121-2898, United States (of America) (opponent), represented by Wilson Gunn, 5th Floor Blackfriars, House The Parsonage, Manchester  M3 2JA, United Kingdom (professional representative)

a g a i n s t

the Room B.V., Anthony Fokkerweg 1, 1059 CM Amsterdam, The Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 765 405 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 270 762 , namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registrations No 3 448 362 and No 13 662 531 ‘FOCUS’ (word marks). 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:

European Union trade mark registration No 6 242 391

Class 9:        Computers; computer hardware, parts thereof and fittings therefor; computer software; computer software for database management; computer software for use in decision support systems; computer software for use in enterprise reporting and analysis systems and for building applications for the management and tracking of data for enterprise reporting systems; computer database programs for use in connection with decision support, analysis, and reporting programs; computer software development tools for use in developing decision support, analysis, and reporting systems and applications; computer software, namely, client/server reporting, analysis and decision support tools; computerized database, reporting, and analysis software for use on corporate intranet web sites; enterprise server software for use in web based data publishing, reporting, and analysis solutions; computer software for accessing databases by means of global computer networks to generate reports; software development tools for making reporting and analysis available through global computer network worldwide websites and for extending the functionality of enterprise reporting and analysis systems on to global computer networks; and computer software for accessing and updating databases through global computer networks.

Class 42:        Computer programming services, and consulting services in the field of computer programming.

European Union trade mark registration No 10 042 257

Class 9:         Computer software; computer programs; downloadable electronic publications and manuals relating to computer software and computer programming.

Class 42:         Computer programming services; design, development and operation of computer software and computer programs; software as a service [SaaS]; information, advisory and consultancy services relating to all the aforesaid services.

The contested goods and services are the following:

Class 9:        Computer software and applications for use in the field of financial and legal analysis and evaluations; Computer software and applications for use in the field of financial administration and accountancy; Electronic publications.

Class 42:        IT services; Creating, maintaining, and modernizing computer software; Design, development and implementation of software; Software as a service [SaaS]; Platform as a Service [PaaS]; Hosting of platforms on the Internet; Providing online software applications and software tools via website hosting of platforms on the internet and other electronic media; Rental of software; Rental of software applications; Electronic data storage and Development of data storage systems; Development of computer hardware and Computer software for commercial analysis and reporting services; none of the aforesaid in relation to computer game software and computer game software development.

Some of the contested goods and services are identical to goods and services 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 marks.

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 that are assumed to be identical are directed partly at the public at large and partly at a professional public with specific 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

FOCUS
Earlier trade marks	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 common element ‘FOCUS’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The verbal element ‘the ROOM’ constitutes the dominant (most eye-catching) element of the contested sign, due to its size, compared with the other elements. Furthermore, below the verbal element ‘the ROOM’, there are the words ‘Helping you focus’. These elements, due to their smaller size and in the context of the other elements of the contested sign, are not clearly legible or perceptible and may well be disregarded by part of the public. They may even not be easily perceived. However, to the extent that this part of the sign contains ‘Focus’ the Opposition Division will examine the opposition in relation to the part of the public that perceives the terms ‘Helping you focus’ in the contested sign, which is the best scenario in which the opponent’s case can be considered.

The words ‘the ROOM’ will be perceived by the relevant public as two independent but linked terms, the article ‘the’ and the word ‘room’: ‘space that can be occupied or where something can be done’ (information extracted from Oxford Living Dictionaries on 19/09/2017 at https://en.oxforddictionaries.com/definition/room).

The opponent’s mark ‘FOCUS’ will be perceived as ‘the main or central point of something, especially of attention or interest’ (information extracted from Cambridge Dictionary on 19/09/2017 at http://dictionary.cambridge.org/dictionary/english/focus).

The English-speaking public will understand ‘Helping you focus’ as something that enables you to better concentrate on a particular topic.

None of the verbal elements has any meaning in relation to the relevant goods and services and therefore they are distinctive. The opponent asserted that apart from ‘ROOM’ the other words are less distinctive but did not offer any explanation as to why. Given that the verbal elements are distinctive the Opposition Division does not follow the opponent’s claim and given the lack of a clear reasoning this assertion must be set aside.

The golden cube containing the verbal elements is of a rather decorative nature and, consequently, is less distinctive than the verbal elements of the mark.

The initial part of the contested sign is completely different to the earlier marks. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from top to bottom and left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore ‘FOCUS’ in the contested sign is secondary.

Visually and aurally, the signs coincide in ‘FOCUS’ but differ in the remaining elements of the contested mark as set out above. The fact that the signs coincide in the term ‘focus’, the only element of the earlier marks, does not necessarily lead to a finding of a higher degree of similarity (contrary to the opponent’s argument), since the other elements of the contested sign, ‘the ROOM’, the terms written in a smaller size ‘Helping you’, the golden cube, are entirely different and contribute to visually distancing the marks. Despite the fact that the earlier marks are wholly included in the contested sign, the dominance of ‘the ROOM’ has to be considered which is also distinctive thus its impact is greater. As noted above, ‘FOCUS’ is secondary in the contested sign given its positioning at the end of the sign and aurally, the overall rhythm and intonation is easily distinguishable due to the number of sounds in the contested sign as compared to the earlier marks. Therefore, in view of the foregoing, the signs are similar to a very low degree both visually and aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public in the relevant territory will perceive a certain degree of similarity between the earlier marks ‘FOCUS’ and the verbal element ‘Helping you focus’ placed at the end of the contested sign. However, the attention of the relevant public will also be attracted by the additional meaning of the distinctive verbal element ‘the ROOM’ of the contested sign. The signs also differ in the less distinctive golden cube to the extent that this concept is perceived. Therefore, the signs are conceptually similar to a low degree.

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 marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The opponent argues that the global impressions created by the contested sign and the earlier marks are clearly similar. The Opposition Division does not agree with this finding. As mentioned above, the marks are visually and aurally similar to a very low degree and conceptually similar to a low degree. To support this view, the Office refers to the above comparison of signs. The slight similarity of the signs is not sufficient to counteract the differences, even on the assumption that the goods and services are identical; therefore, the public would not believe that the goods and services come from the same undertaking or from economically-linked undertakings.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings. The marks compared in this decision were both word marks whereas the contested sign in the current comparison is a figurative sign whose word in common with the EUTM application ‘FOCUS’ is a secondary element, as stated above. Moreover, two out of four of the words of the contested sign in the decision referred to above were descriptive of the services applied. Therefore, the signs were similar to a higher degree than the signs compared in the decision in question because one of the two remaining distinctive words, ‘FOCUS’, was identical to the earlier right.

In the scenario described above, and taking into account all the circumstances of the case and arguments and evidence submitted by the parties, it is considered that the signs do not have sufficient similarities a for likelihood of confusion or association between them to arise, even assuming the identity of the goods and services involved and the distinctiveness of the earlier marks Indeed, even the average consumer is reasonably observant and circumspect and will easily distinguish the signs, as will the more professional consumer.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The comparison of signs focused on those who would visually perceive ‘Focus’ in the contested sign and, moreover, see it as distinctive. This is the best light in which the opposition can be examined and even in this scenario the similarities are low and as such it is not necessary to examine from the part of the remaining part of the public. Therefore, the outcome cannot be different with respect to the remaining part of the public and no likelihood of confusion exists with respect to this part of the public.

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

Vanessa PAGE

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.