OPPOSITION No B 1 743 726

Nanium, S.A., Av. 1 de Maio 801, Mindelo, 4485-629 Mindelo, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Innovation First, Inc., 1519 Interstate 30 West, Greenville, Texas 75402, United States of America (applicant), represented by Fish & Richardson P.C., Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 München, Germany (professional representative).

On 26/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 743 726 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 9 157 421. The opposition is based on Community trade mark registrations No 8 670 465 and No 8 863 995 and Portuguese trade mark registrations No 457 025 and No 461 330. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 8 670 465.

1. The goods and services

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

Class 9: Electric and electronic communication or interconnection apparatus, equipment and instruments.

Class 37: Installation, assembly, checking and repair of electrotechnical and electronic facilities, products and equipment.

Class 42: Scientific and technological research, design, computer programming, manufacturing systems and processes in the fields of electrotechnology, electronics, metrology, computing, physics, chemistry and mechanical engineering; material testing; consultancy, engineering and technical inspection in these fields; technical support for research and development projects in all the aforesaid areas.

The contested services are the following:

Class 41: Educational services, namely, arranging live and online seminars, workshops and classes, all in the field of robotics and electronics; entertainment services, namely, organizing exhibitions, competitions and conducting contests and games in the field of robots; electronic publishing services, namely, publication of text and graphic works of others on CDs and online in the field of robotics; publication of books and magazines; all aforementioned services unrelated to humanoid robots.

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.

The term ‘namely’, used in the applicant’s list of services 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 services.

The contested educational services, namely, arranging live and online seminars, workshops and classes, all in the field of robotics and electronics are similar to the opponent’s scientific and technological research in the fields of electrotechnology, electronics, computing and mechanical engineering since they share the same general purpose of acquiring and/or imparting or disseminating knowledge or skills. Moreover, they may target the same end consumers through the same distribution channels.

The rest of the contested services, namely entertainment services, namely, organizing exhibitions, competitions and conducting contests and games in the field of robots; electronic publishing services, namely, publication of text and graphic works of others on CDs and online in the field of robotics; publication of books and magazines; all aforementioned services unrelated to humanoid robots are considered to be dissimilar to the opponent’s goods and services. They do not have the same nature and satisfy different needs. The services of the contested mark and the goods and services of the earlier mark do not usually stem from the same origin but are usually offered by specialised companies in their corresponding fields. Furthermore, they are normally offered to different end users through their proper distribution channels.

2. The signs

NANIUM	NANO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in in the letters ‘N-A-N’. However, they differ in the letters ‘I-U-M’ and the letter ‘O’ at the end of the earlier mark and the contested sign respectfully.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the syllables in the sound of the letters /N-A-N/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters /I-U-M/ of the earlier mark and /O/ of the contested sign.

Conceptually, the public in the relevant territory will perceive the contested mark as a prefix indicating extreme smallness, such as nanoplankton in English or one billionth of the stated unit, for example, nanosecondo in Italian or nanoestructura in Spanish. Moreover, it can be perceived as involving the use of nanotechnology, as the manipulation of matter on an atomic, molecular and supramolecular scale. On the other hand, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

As previously mentioned in the conceptual comparison, the word ‘NANO’, which constitutes the contested sign, will be associated with concepts such as extreme smallness, one billionth of the stated unit or be perceived as involving the use of nanotechnology. Therefore, a connection may be made with the relevant services since the sign alludes to the technology that the services may apply. Consequently the distinctiveness of this sign is considered as low.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 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 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. 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 similar are directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be high.

6. Global assessment, other arguments and conclusion

The contested services are partly similar and partly dissimilar to the opponent’s goods and services.

The signs are visually and aurally similar to the extent that they both contain the sequence of letters ‘N-A-N’. However, the signs differ in the additional letters ‘I-U-M’ in the earlier mark and ‘O’ in the contested sign, which means that the earlier mark is composed of six letters while the contested signs is form by four letters.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Although the different letters do not occupy the beginning of the signs, they are perceptible at first glance, without any extra effort, and will not escape the attention of the consumer, as their presence creates a sufficiently different overall impression of the signs in dispute. From the aural point of view, the pronunciation of the three last letters in the earlier mark will imply a clearly perceptible difference by the relevant public as well.

Moreover, this different overall impression is enhanced by the fact that the contested sign will be associated to a specific concept that lacks in the earlier mark.

Therefore, in view of the foregoing and taking into account all the relevant circumstances of the case, in particular the high degree of attention that the public will pay when use the services at issue; the Opposition Division concludes that the differences between the signs are sufficient to exclude a likelihood of confusion.

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

The opponent has also based its opposition on the following earlier trade marks:

Portuguese trade mark registration No 457 025 for the word mark ‘NANIUM’, Portuguese trade mark registration No 461 330 for the figurative mark and Community trade mark registration No 8 863 995 for the figurative mark .

The earlier Portuguese trade mark registration No 457 025 is identical to the one which has been compared and cover the same scope of goods and services plus some goods in Class 9, namely, electric and electronic apparatus, equipment and instruments; equipment and instruments for investigation in laboratories; physical and chemical instruments, which are clearly different to the services applied for in the contested trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements which are not present in the contested trade mark. Moreover, they cover the same scope of the goods and services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Agueda MAS PASTOR

Victoria DAFAUCE MENÉNDEZ

Karin KHUL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.