OPPOSITION No B 2 642 067

DNA Oy, Läkkisepäntie 21, 00620 Helsinki, Finland (opponent), represented by Krogerus Attorneys Ltd, Unioninkatu 22, 00130 Helsinki, Finland (professional representative)

a g a i n s t

José Jesús Mañas Jiménez, c/ Atenas, núm. 22, 07141 Marratxi, Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 067 is upheld for all the contested services.

2.        European Union trade mark application No 14 897 151 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 897 151. The opposition is based on, inter alia, European Union trade mark registration No 10 326 809. The opponent invoked Article 8(1)(b) and 8(5) 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 European Union trade mark registration No 10 326 809.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 42: Scientific and technological services in the field of information and communications technology; technical support.

The contested services are the following:

Class 42: Design, development and implementation of software, namely Software as a service [SaaS] of Big Data.

An interpretation of the wording of the list of contested services is required to determine their scope of protection. The term ‘namely’ shows the relationship of the individual services with a broader category; it is exclusive and restricts the scope of protection only to the specifically listed services.

Therefore, the contested services are to be interpreted as design, development and implementation of software as a service [SaaS] of big data

Software as a service (SaaS) is a software distribution model in which a third-party provider hosts applications and makes them available to customers over the internet. ‘Big data’ is an evolving term that describes any voluminous amount of structured, semi-structured and unstructured data that has the potential to be mined for information. ‘Big data’ is often characterised by the extreme volume of data, the wide variety of data types and the speed at which the data must be processed.

Therefore, ‘big data’ refers to the specific purpose or the business sector of the software that is to be designed, developed, implemented and ultimately delivered/offered to end users through a distribution model in line with the software as a service approach. Therefore, the contested design, development and implementation of software as a service [SaaS] of big data is included in the broad category of, or at least overlaps with, the opponent’s technological services in the field of information and communications technology that entail activities such as the design, development and implementation of software (of any kind). Therefore, they are identical.

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 services found to be identical are directed at business customers with specific professional knowledge or expertise in the field of ‘big data’ software.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased services.

3. The signs

DNA
Earlier trade mark	Contested sign

The relevant territory is 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). This applies by analogy to international registrations designating the European Union. 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 ‘DNA’ is meaningful in certain territories, for example, in those countries where English is understood. ‘DNA’ will be perceived as the abbreviation for ‘deoxyribonucleic acid’, ‘a self-replicating material which is present in nearly all living organisms as the main constituent of chromosomes. It is the carrier of genetic information’ (information extracted from Oxford Dictionaries on 21/06/2017 at http://www.oxforddictionaries.com/). In addition, the relevant public in the European Union is familiar with English, as it is widely used in the information and communication technology market. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark comprising the three letters ‘DNA’.

The contested sign is figurative and depicts a black circle and two concentric curved lines, aligned vertically, the first in black and the second in blue. The figurative element is followed by the verbal elements ‘Wireless’ and ‘DNA’ on two lines. Both elements are in a standard typeface; the word ‘Wireless’ is in black title case letters and the three letters ‘DNA’ are in brown upper case letters.

The element that the signs have in common, ‘DNA’, will be associated with ‘deoxyribonucleic acid’. Bearing in mind that the relevant information and communication technology services and software might be applied to DNA investigation or analysis, this element is considered weak for these services, as it can refer to the purpose of the services.

In the contested sign, the element ‘Wireless’ will be associated with ‘Using radio, microwaves, etc. (as opposed to wires or cables) to transmit signals’ (Oxford Dictionaries), and the figurative element will be perceived as depicting two waves transmitted from a remote point. Bearing in mind that the relevant services are design, development and implementation of software that can be run without wires, these elements are non-distinctive for these services.

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, in the contested sign, the figurative element has less impact than the verbal element and the letters ‘DNA’ are the dominant element, as it is the most eye-catching by virtue of its larger size than the word ‘Wireless’.

Visually, the signs have in common the abbreviation ‘DNA’. However, they differ in the additional word ‘Wireless’ and the figurative element of the contested sign, which have no counterparts in the earlier mark.

Taking into account the limited impact of the contested sign’s figurative element and bearing in mind that ‘DNA’ is its dominant element and the only element of the earlier mark, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DNA’, present identically in both signs. The pronunciation differs in the sound of the word ‘Wireless’ of the contested sign, which has no counterpart in the earlier mark.

Taking into account the non-distinctive character of the differentiating word, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to an average 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 mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low.

However, the earlier mark has to be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

5. Global assessment, other arguments and conclusion

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).

The contested services are considered identical to the opponent’s services and they target professionals, whose degree of attention varies from average to high.

The earlier mark is considered to have at least a minimum degree of inherent distinctiveness. However, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, as in the present case, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The signs under comparison are visually and aurally highly similar, and conceptually similar to an average degree. The entire verbal element of the earlier mark is wholly included in the contested sign as an independent and, therefore, clearly recognisable element.

Therefore, there is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

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).

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

In his observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include ‘DNA’ to convey the idea that a new product is the result of a ‘better’ or ‘new’ manufacturing process. In support of his argument, the applicant refers to several European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘DNA’. In addition, the alleged meaning suggested by the applicant is not substantiated. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 326 809. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 10 326 809 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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(5) 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 applicant is the losing party, he 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

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui IVANOV

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.