OPPOSITION No B 2 702 184

Vass Consultoría de Sistemas S.L., Av. Severo Ochoa 25, 28100 Alcobendas – Madrid, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Águila, 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastián de los Reyes (Madrid), Spain (professional representative)

a g a i n s t

Spectator Intellectual Properties BV, Nieuwstraat 2, 4921 CX Made, The Netherlands, (holder), represented by TDH Advocaten, Alexander Battalaan 44, 6221 CE Maastricht, The Netherlands (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 702 184 is upheld for all the contested goods and services.

2.        International registration No 1 273 307 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 273 307. The opposition is based on, inter alia, Spanish trade mark registration No 3 102 836. The opponent invoked Article 8(1)(a) and (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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 102 836.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9:        Computer software and computer programs and other electronic devices; software and computer downloadable software from networks; software bearers; computer software graphic design; software for web pages and integration for dynamic web site creation; entertainment software; financial management and commerce software[;] software for electronic commerce.

Class 35:        Electronic commerce, providing information about products through telecommunications networks for advertising and retail purposes; marketing; advertising; direct marketing; Marketing consulting; online marketing campaigns; online broker services; professional consultancy in business support services to the exploitation of business, business consulting services; management business, business focused on the representation of national and foreign companies that produce equipment, software supplies and advisors network management IT business and telecommunications, business management focused on distribution and maintenance of equipment, software supplies, implementation, creation, import and export of goods in general, business administration in the creation, construction, implementation and maintenance of computer software, business management and commercial administration focused on consultancy, management, technology and evaluation design, development and software, implementation and commercial management focused on customers in counse[l]ling or adaptation migration environments open compute systems excluding any commercial business, administ[r]ation business or related to insurance, business, financial business money or real estate.

Class 42:        Computer programming; computer programming for internet; computer engineering; Consulting; Computer systems integration and computer networks; Computer network services; computer viability studies; Computer programming consulting; graphic design services; graphic design for corporate identity; Computer graphics; scientific and technological consulting services; design and development of computer equipment and software.

The contested goods and services are the following:

Class 9:        Software (registered computer programs), particularly for the use of a network intended for digital surveillance at various locations, as well as for the rapid identification of persons and vehicles and for information via supporting cameras and servers; video verification software; software relating to the mobile virtual surveillance of protected objects at risk; electronic communication, security, alarm and surveillance systems and networks.

Class 37:        Services relating to the installation, repair and maintenance of warning systems and electronic communication, security, alarm and surveillance systems and networks.

Class 42:        Automation services, including consulting relating to the use of alarm monitoring and healthcare video communication; automation services, particularly for the use of a network intended for digital surveillance and bidirectional audio communication at various locations, as well as for the rapid identification of persons and vehicles and for information and communication via supporting cameras and servers; automation services relating to video verification; automation services relating to the mobile virtual surveillance of protected objects at risks; automation services relating to electronic communication, security, alarm and surveillance systems and networks; services relating to the installation, repair and maintenance of software.

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 terms ‘particularly’ and ‘including’, used in the holder’s list of goods and services, indicates that the specific goods and services 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).

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

Considering what has been stated above regarding the term ‘particularly’, software (registered computer programs) is identically contained in both lists of goods and services (including synonyms).

The contested video verification software; software relating to the mobile virtual surveillance of protected objects at risk; electronic communication, security, alarm and surveillance systems and networks are included in the broad category of the opponent’s computer software. Therefore, they are identical.

Contested services in Class 37

Services relating to the installation, repair and maintenance of warning systems and electronic communication, security, alarm and surveillance systems and networks cover all the services involved in the installation, repair and maintenance of the networks mentioned which are all nowadays computer-based.

The opponent’s computer systems integration and computer networks in Class 42 covers the services rendered by an IT-engineer and/or programmer in constructing those kind of computer-based networks and preparing and planning the work to be executed. It includes planning and designing of the form and structure of the networks.

Computer systems integration and computer networks services are indispensable for the services relating to the installation, repair and maintenance of warning systems and electronic communication, security, alarm and surveillance systems and networks and, therefore, are complementary. Furthermore, these services are often offered together through the same distribution channels and target the same end consumer. Therefore, they are considered similar to a low degree.

Contested services in Class 42

The contested services relating to the installation, repair and maintenance of software are included in the broad category of the opponent’s computer programming. Therefore, they are identical.

The contested automation services, including consulting relating to the use of alarm monitoring and healthcare video communication overlap with the opponent’s scientific and technological consulting services, since the former include technological consulting services. Therefore, they are identical.

The remaining automation services, particularly for the use of a network intended for digital surveillance and bidirectional audio communication at various locations, as well as for the rapid identification of persons and vehicles and for information and communication via supporting cameras and servers; automation services relating to video verification; automation services relating to the mobile virtual surveillance of protected objects at risks; automation services relating to electronic communication, security, alarm and surveillance systems and networks are all services for automatic control, that is, the use of various control systems for operating equipment with minimal or reduced human control by mechanical means and, more and more, electric or electronic devices and computers or a combination of those means.

The opponent’s computer programming is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

There is a close link between programming services and automation services. This is because providers of automation services will also commonly provide software-related services (as a means of keeping the automation system updated, for example). Furthermore, both the relevant public and the usual providers of the services may coincide. Finally, these services are complementary. Therefore, they are considered similar.

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. Furthermore, the impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41). In the case at hand, the vast majority of the goods and services is related to security purposes (surveillance, video verification, alarming, etc). For those goods and services, the degree of attention will, therefore, be higher.

3. The signs

VASS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested sign is a figurative mark consisting of the verbal element ‘VAS’ in black uppercase letters in standard typeface without any further graphical stylization.

The earlier mark is the word mark ‘VASS’ and it has to be noted that in the case of word marks it is the word as such that is protected, regardless the way it is depicted.

The element ‘VAS’ of the contested sign will be perceived by the relevant public as a form of the verb ‘ir’ (to go), namely the 2nd person singular of the present tense (you go). Therefore, it is distinctive for the goods and services in question.

The single element ‘VASS’ of the earlier word mark has no meaning for the relevant public and is, therefore, distinctive, too.

Visually, the signs coincide in the letters ‘VAS’. However, they differ in the additional letter ‘S’ of the earlier mark and the typographic depiction of the contested sign which, however, is not very peculiar. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in in the sound of the letters ‛VAS’, present identically in both signs. Since the additional letter ‘S’ in the earlier mark will not lead to a different pronunciation, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign, as explained above, the other sign 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness due to its reputation but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to various degrees. The signs are visually highly similar and aurally identical.

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).

The contested sign has three letters and is, consequently, a short mark. The fact that the earlier mark differs in one additional letter, in principle, could be considered a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

However, the only different letter is placed at the end of the earlier mark and is, furthermore, just a repetition of the (common) third letter ‘S’. Consequently, the fact that the entire contested mark ‘VAS’ is contained in the first three letters of the earlier mark (‘VASS’) and that the only differing letter is identical to the last one in common, leads to a finding of likelihood of confusion, because the order of the common letters is the same (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy). Furthermore, the slight stylization and the rather banal figurative character of the contested sign, do not lead to a different overall impression.

Finally, 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). In the case at hand the high degree of similarity between the signs outweighs the low similarity of part of the services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 102 836. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the Spanish earlier right No 3 102 836 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Octavio MONGE GONZALVO

Konstantinos MITROU

Julia SCHRADER

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.