PRESENTIGO | Decision 2547852 - Manuel Marí Gómez v. Ave Innovation s.r.o.
Date Published: Oct 11, 2017
OPPOSITION No B 2 547 852
Manuel Marí Gómez, Avenida Roma, 97 bajo derecha, 08029 Barcelona, Spain (opponent)
a g a i n s t
Ave Innovation s.r.o., Dostálova 882/63, 61300 Ostrava, Czech Republic (applicant) represented by Inpartners Group Koliště 13a 602 00 Brno, Czech Republic (professional representative).
On 29/03/2017, the Opposition Division takes the following
1. Opposition No B 2 547 852 is partially upheld, namely for the following contested goods and services:
Class 9: Computer programmes for data processing.
Class 42: Design and development of online computer software; Rental of application software; Authoring of software; Design and development of computer software.
2. European Union trade mark application No 13 735 519 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 735 519. The opposition is based on European Union trade mark registration No 3 801 099. The opponent invoked Article 8(1)(a) and 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 15/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/04/2010 to 14/04/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 9: Scientific, nautical, surveying, electronic, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers.
Class 35: Advertising and publicity; management of business affairs; commercial administration; office work.
Class 37: Services for construction; repair; Repair and maintenance.
Class 38: Telecommunications.
Class 39: Transportation; packaging and storage of goods; Travel arrangement.
Class 42: Scientific and industrial research; software programming.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 11/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/04/2016 to submit evidence of use of the earlier trade mark. On 15/04/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. This will not affect the presentation of information which is otherwise publicly available.
The evidence to be taken into account is the following:
- Product catalogues ‘PRESENTCO’ CIRCUITO CERRADO TV from 2012 and 2014 showing ‘PRESENTCO’ Closed Circuit Television (CCTV) IP cameras, digital video recorders, web Servers and IP Cameras management software
- Several invoices for each year between 2010 and 2015 showing sales of IP cameras, digital video recorders and software, installation and set-up of webserver. The term ‘CIRCUITO CERRADO DE TV PRESENTCO’ is displayed on each invoice
- Spanish Security Services Directory pages from 2010, 2013 and 2014 showing entry for ‘PRESENTCO’
- Spanish national and international registration certificates of trade mark registrations for ‘PRESENTCO’, for ‘RISTER’, and for the different types of software names referred to by the opponent
- Pictures of packaging (boxes, CDs) with the word ‘PRESENTCO SECURITY SYSTEMS’
- Catalogues of the event SICUR security exhibition held in 2010, 2012, 2014, listing ‘PRESENTCO’ and photos showing the stand of ‘RISTER seguridad,’ together with displays of ‘PRESENTCO’ ‘CIRCUITO CERRADO TV’, ‘THERMAL SECURITY’, ‘IP SYSTEMS’. The catalogues show a long list of different goods, such as access control cards, identification cards, etc.
- Screenshots from the website ‘PRESENTCO.ES’ showing cameras
- Product presentation and invoices from 2013/2014 for a 360 video stitching software
- Several invoices for the years 2010, 2013 and 2014 showing sale and installation of image recognition software and access control software. While the software is often identified with another name, the term ‘CIRCUITO CERRADO DE TV PRESENTCO’ is displayed on each invoice.
- Screenshot from the website of the company RISTER, with the following info: “departments are set to serve their customers by ensuring a professional advice to meet your needs: Industrial engineers specialized in electronics, telecommunications and information technology / computing. After-sales technical support and repairs. Technical support in the installation and maintenance of equipment. Commercial and technical attention. Consulting services and project development. Administration and financial management. Warehouse and shipping.” The mark ‘PRESENTCO’ is placed at the bottom of the site within a small rectangle together with the image of a camera:
- There are additional documents containing information about the opponent or the company RISTER but they do not make any reference to the mark ‘PRESENTCO’.
The exclusively Spanish-language evidence clearly shows that the place of use is Spain. The invoices, contracts and orders, the continuous presence of the mark in Spanish directories show the use of the mark throughout the entire country. In the present case, given the size and significance of the Spanish market within the European Union, it can be concluded that the territorial extent of use was sufficiently shown for the European Union.
All the evidence is dated within, and is distributed evenly throughout, the relevant period.
The significant number of invoices for substantial amounts provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The invoices and catalogues show use of the word mark ‘PRESENTCO’ as registered, notably either alone, or together with non-distinctive terms describing the field of application of the goods, such as ‘CIRCUITO CERRADO DE TV’ or ‘SECURITY SYSTEMS’. While not in the product description itself, the mark is displayed on the invoices in a prominent place, in a way which makes it possible to establish a clear link between the use of the mark and the relevant goods and services.
The invoices attest to a significant number of sales made under the mark in the relevant territory.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, it does reach the level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
Having duly assessed the evidence produced by the opponent, the Office finds that there is insufficient evidence as regards the use of the earlier trade mark in connection with most of the goods and services for which it is registered, and use is shown only for certain specific types of products in Class 9.
As regards the services in Classes 35, 37, 38, 39 and 42, no evidence of use has been provided. While the evidence shows that the opponent develops software, this development process only concerns software directly marketed by the opponent, and not software which would be developed for, and to be marketed by third parties. There is evidence of the opponent performing initial installation and setup of his own products, however there is no evidence or repair, maintenance services provided later on. The company RISTER’s website talks about consulting services and project development, administration and financial management, there is no further evidence of such services being provided, or, more importantly, these services being provided in connection with the opponent’s trade mark.
As regards Class 9, the opponent has protection for the entire class heading, and provided evidence only for certain goods.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
The Office is of the view that the class heading of Class 9 is sufficiently broad for it to be possible to identify within it various sub-categories capable of being viewed independently.
This is because the opponent provided evidence of use for very specific goods, mainly in the field of closed circuit television systems, and software for very specialised purposes, e.g. ip cameras, video stitching, image recognition and access control. These goods are developed for distinct purposes, requiring specific engineering skills. While the SICUR security exhibition catalogue contains other goods in relation to the opponent’s mark, such as access control cards, identification cards, etc., there is no other evidence that would confirm that these goods were indeed put on the market.
Consequently, the evidence, in particular the invoices, product catalogues, and the opponent’s website, shows genuine use of the trade mark only for the following goods in Class 9:
Class 9: Closed circuit television systems (CCTV); Closed circuit television cameras; IP cameras and web Servers; IP Cameras management software; digital video recorders and related software; video stitching software; image recognition software; access control software.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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 goods
The goods on which the opposition is based are the following:
Class 9: Closed circuit television systems (CCTV); Closed circuit television cameras; IP cameras and web Servers; IP Cameras management software; digital video recorders and related software; video stitching software; image recognition software; access control software.
The contested goods are the following:
Class 9: Computer software for graphics presentation, namely software for the development, storage, searching, manipulation and alteration of text and graphics for use in presentations and auxiliary software for use therewith; Computer programmes for data processing; Downloadable software for use in the development and sharing of collaborative presentations; Downloadable software in the form of mobile applications for presentations; Computer application software for mobile phones, personal digital assistants, tablets and computers, software for arranging commerce, including development of multimedia presentations, collation, management and administration of commercial notes and feedback from clients and customers, development, management and accessing of commercial and sales databases; Computer application software for mobile phones, personal digital assistants, tablets and computers, software for educational purposes, including development of multimedia presentations, collation, management and administration of educational texts and graphics.
Class 42: Providing of services via software applications for use in the development, organisation and providing of presentations; Design and development of online computer software; Rental of application software; Authoring of software; Design and development of computer software; Providing websites featuring non-downloadable software for use in the development and sharing of collaborative presentations; Software as a service, services featuring software for business management, including development of multimedia presentations, collation, management and administration of commercial notes and feedback from clients and customers, development, management and accessing of commercial and sales databases; Software as a service, services featuring educational software, including development of multimedia presentations, collation, management and administration of educational texts and graphics, development, management and accessing of educational databases.
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 term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
At the same time, the term ‘including’, indicates that the specific goods 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).
The contested computer programmes for data processing is a broad category of different software which process different kinds of data, including digital images. Therefore, the opponent’s image recognition software also falls under the applicant’s broad category, which cannot be dissected ex officio by the Opposition Division. Therefore, the goods are identical.
The remaining contested goods are software for a very specific purposes, namely for the development and sharing of presentations, arranging commerce, and for educational purposes.
While the opponent has also demonstrated use for certain software, these software are for very distinct purposes, notably for managing IP cameras and digital video recorders, video stitching, image recognition and access control.
In general, there are many types of software in the market, and although software by nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that their specific purpose is the same. This implies that very specific software could even be dissimilar to another type of software.
The field of application of a presentation, commercial management or education software is not the same as software for access, image recognition, or operating digital recorders and IP cameras. Due to these significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. These goods are therefore dissimilar.
Contested services in Class 42
Design, development, authoring software consists, inter alia, of the process of writing source code (judgment of 29/03/2012, T-417/09, Mercator Studios, EU:T:2012:174 § 26), and software is a set of coded instructions that enables a machine, especially a computer, to perform a desired sequence of operations. Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.
Therefore, software developing and design services are, in general terms, closely linked to software. This is because in the field of computer science, producers of software will also commonly provide software-related services.
Some of the contested services, i.e. design and development of online computer software; authoring of software; design and development of computer software are phrased in a very general manner and cover the broad category of software development and design services. As such, these broad categories also include design and development of the opponent’s video stitching software, because services to develop such software, in lack of any further specification, cannot be filtered ex officio from the broad categories of the contested services.
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 coincide. Furthermore, they are goods and services that are complementary. For these reasons these goods and services are considered similar.
The contested rental of application software, on the same token, is considered similar to a low degree to the opponent’s video stitching software, because it is common for the manufacturer of software to provide rental services, and since the Opposition Division cannot filter the broad category of application software, the contested rental services concern any type of application software, including video stitching software.
The rest of the services, are, however, dissimilar to the goods of the opponent. They are related to software for presentations, business management, education, which are, as seen above, very different in purpose from the opponent’s goods. The goods and services differ in nature, producers/providers, distribution channels, and they are not complementary either.
- 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, development of software and image recognition, video stitching, data processing software are mainly directed at professionals seeking software or development services in their particular sector of expertise, for the smooth running of their business. The degree of attention will, therefore, be high.
- The signs
Earlier trade mark
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 ‘PRESENT’ is not meaningful in certain territories, for example, in those countries where English, French, Spanish or Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public which does not recognise any meaning in the term ‘PRESENT’, for example the Hungarian, Czech and Slovene-speaking part of the relevant public.
Visually and aurally the signs coincide in their initial seven letters/sounds ‘PRESENT’. They also coincide in the last letter/sound ‘O’.
The signs differ in the eighth letter of the earlier sign, and the eighth and ninth letter of the contested sign.
Given that the signs only differ in one or two letters, out of nine or ten, the signs are aurally and visually similar to a high degree.
Conceptually, none of the signs have a meaning for the public subject to the assessment. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 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
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 covered are from the same or economically linked undertakings.
Moreover, account is taken of the fact that consumers, even attentive ones, 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).
In the present case, the signs are visually and aurally highly similar, differing, out of nine or ten letters, only in one or two near the end of signs. The signs have no concepts which could help the public making a distinction.
Given such a high degree of visual and aural similarity, even the highly attentive public will readily assume that those goods and services which have been found identical or similar come from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public which does not recognise any meaning in the coinciding term, for example the Hungarian, Czech and Slovene-speaking part of the relevant 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 partly well founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
For the sake of completeness, as far as the invoked ground Article 8(1)(a) EUTMR is concerned, it must be mentioned that the opposition would also fail under this ground insofar as the dissimilar goods and services are concerned, because the goods and services are not identical, and neither are the signs.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Cynthia DEN DEKKER
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.