OPPOSITION No B 2 239 252

Cape Technologies Limited, Maple House, Temple Road, Blackrock, Co. Dublin, Ireland (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Wedo Shopping Limited, Unit 3.02, Lincoln House, Kennington Business Park, 1-3 Brixton Road, London SW9 6DE, United Kingdom (applicant), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 239 252 is partially upheld, namely for the following contested services:

Class 35: Advertising of beds; advertising of mattresses; advertising of furniture; advertising of sofas; advertising of sofa beds; advertising on the internet; book-keeping; brand testing; business administration; television advertising; business services and advice on the commercialization of goods and services.

2. European Union trade mark application No 11 594 611 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 594 611. The opposition is based on European Union trade mark registration No 4 824 884, in regard to which the opponent invoked Article 8(1)(b) EUTMR, and Portuguese trade mark registrations No 348 473 and No 425 591, in regard to which the opponent invoked Article 8(1)(b) and Article 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 4 824 884 and Portuguese trade mark registration No 348 473.

1. The goods and services

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

Portuguese trade mark registration No 348 473

Class 9: Computer programs, computers, computer and telecommunications apparatus.

Class 35: Advertising services.

Class 38: Telecommunications services and computer telecommunications.

Class 42: Services relating to the study and activity of engineers, research and development in the field of telecommunications and computers; design and development of software, computer programs for telecommunications.

European Union trade mark registration No 4 824 884

Class 9: Computer software; computers; adapters for computers; components for computers; parts and fittings for computers; intercoms; microcomputers; minicomputers; microphones; computer memory hardware; interfaces for computers; computing devices; data processing machines/computer memory devices, random access memory circuits, chips; semiconductor devices, integrated circuits, electronic circuit boards, microprocessors; electronic circuits, terminals, controllers; integrated circuits; printed circuits; magnetic disks; floppy disks; data modules; batteries and telecommunications equipment; computer software networks, wide area networks, and global computer networks; computer software used for software development and web authoring; computer related security devices for portable computer products; boxes and cases (for computers, computer peripherals and computer equipment); computer programs; operating system software and application software.

Class 16: Instruction and teaching materials; documentation and publication relating to computers or computer programs or services; manuals; printed publications; books; magazines; periodicals; newspapers; printed matter; printed matter relating to software and computers; office requisites; articles of stationery.

Class 35: Business management and business advisory services; commercial business information; distribution of leaflets; distribution of samples; arranging newspaper subscriptions for others; dataprocessing management.

Class 38: Telecommunications, computer terminal communications; communications for commercial interaction in the field of global computer networks; services for providing user access to computers for business purposes.

Class 41: Education; amusement; providing of training; conferences; seminars; exhibition services; arranging and conducting of conferences, symposiums and congresses; organisation of exhibitions for cultural or educational purposes.

Class 42: Computer programming; design, updating and maintenance of computer software; design, installation, interconnection, testing and maintenance of software and information for computers; services for information handling systems products; technical project studies in the field of computer hardware and software; computer software consulting services; computer systems analysis; consultancy and advice relating to computer programmes; rental, distribution, licensing, sub-licensing and sale of computer software; scientific and industrial research; technical support for computer programs; services for internet websites.

The contested goods and services are the following:

Class 20: Beds; bed frames; bed headboards; bed rails; chair beds; folding beds; portable beds; infant beds; sofa beds; water beds; wooden beds; bed frames of metal; adjustable beds; bed springs; bunk beds; children's beds; divan beds; feather beds; foldaway beds; beds made of wood; beds of woods; headboards for beds; bed casters (not of metal); bed fittings (not of metal); bedding except linen; air pillows, air cushions; pillows; air beds; mattresses; air mattresses; futon mattresses; inflatable mattresses; mattress cushions; mattress foundations; mattress toppers; spring mattresses; straw mattresses; mattresses made of flexible wood; nursery cots; cot bumpers; nursery furniture; play pens for babies; toy boxes; bedding for nursery cots; shelves being nursery furniture; sofas; sofa beds; sleeper sofas; extendible sofas; convertible sofa; armchairs; wall sofa; cushions; furniture (also garden and office); mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; notice boards, workbenches, boxes of wood or plastic, bamboo, bamboo curtains, booster seats, baby-walkers, flower-stands, tables, table tops, bedroom furniture; cabinets (furniture); desks (furniture); rods for beds; slatted bases for beds; bedside cabinets (furniture); wardrobes (furniture); chest of drawers (furniture); bedside tables (furniture); dressing tables (furniture); furniture chests; furniture frames; furniture mouldings; furniture partitions; furniture parts; furniture (shelves); futons; headrests (furniture); upholstered furniture; bumper guards for furniture; furniture for displaying goods; furniture made of metal; dining room tables; dining room chairs; fittings for dining room furniture; furniture (dining room); living room furniture; benches; benches; deckchairs; furniture doors; door fittings not of metal; bottle racks; footstools; nesting boxes; armchairs; lockers; curtain hooks; curtain holders; tie-backs; curtain rings; curtain rails; curtain poles; curtain pulls; hinges (not of metal); headrests; shelves for filing cabinets; shelves for storage; shelves; coat hangers; clothes hooks (not of metal); washstands (furniture), office furniture; baskets (not of metal); handling pallets (not of metal); chests for clothing, blankets or laundries; mouldings for picture frames; picture frame brackets; sideboards; medicine cabinets; keyboards for hanging keys; umbrella stands; slatted indoor blinds; woven wooden blinds; draughtman's tables; trolleys; desks; school furniture; writing desks; display stands; screens; sleeping bags; ladders; chairs; plate racks.

Class 21: Household and kitchen utensils; tableware; glassware; porcelain; stoneware and chinaware; porcelain; ceramic and pottery ware; tea services and coffee services; ornaments; baskets; candlesticks; candle holders and candelabras; coasters; napkin holders; household, kitchen and cooking utensils and containers as well as parts and equipment for the same not included in other categories; crockery; drinking vessels; sponges; brushes; articles for cleaning purposes including cover sponges, dusters, dusting cloths; glassware; porcelain, china, earthenware not included in other categories; abrasive pads for use in the kitchen; steel wool; bowls; basins; drinking containers; ironing boards; bootjacks; shoetrees; bottle openers; bottles; bowls; breadbaskets; breadboards; cheeseboards; chopping boards; brooms; mops; mop bucket incorporating mop wringers; buckets or pails; butter dishes; cake moulds; chamber pots; clothes drying racks; manual coffee grinders and non-electrical coffee filters; bread baskets; frying pans; cooking pots; ice buckets; corkscrews; cake moulds; egg cups; cups; beakers; tumblers; pitchers; saucers; dishes; sauce and gravy boats all made of materials other than precious metals; dishes; fruit bowls; glasses (containers); soap dispensers and holders; dusting cloths; feather dusters; bottles; flower pots; flower-pot covers; fly whisks; funnels; refuse bins; jars; grill pans; cooking moulds and stands; napkin rings and holders not made from precious metals; tableware; salt and pepper mills; mustard pots; dustbins; rolling pins; watering cans; watering-can spray heads; saltcellars not made of precious metals; sieves (household utensils); spice sets; tea strainers; tea services and teapots all made of materials other than precious metals; toilet bags; toilet-paper dispensers; tooth-brushes; toothpicks; trays or baskets for domestic use and not made of precious metals; insulated bottles and flasks; vases; glass ornaments; statuettes and pomanders; refuse bins; non-electrical whisks, beaters and percolators for domestic use; candlesticks not made of precious metals; decanter stands other than those made of paper or fabric; cake dishes not made of precious metals; decanters not made of precious metals; porcelain and china knobs; mincers; ice cream moulds.

Class 24: Bed sheets; bed spreads; canopies (cover for beds); comforters for beds; textile fabrics for use in the manufacture of beds; valances; sofa covers; woven fabrics for sofas.

Class 35: Advertising of beds; advertising of mattresses; advertising of furniture; advertising of sofas; advertising of sofa beds; advertising on the internet; book-keeping; brand testing; business administration; television advertising; Business services and advice on the commercialization of goods and services; wholesale and retail services for beds, bed frames, bed headboards, bed rails, chair beds, folding beds, portable beds, infant beds, sofa beds, water beds, wooden beds, bed frames of metal, adjustable beds, bed springs, bunk beds, children's beds, divan beds, feather beds, foldaway beds, beds made of wood, beds of woods, headboards for beds, bed casters (not of metal), bed fittings (not of metal), bedding except linen, bed sheets, bed spreads, air pillows, air cushions, canopies (cover for beds), pillows, comforters for beds, textile fabrics for use in the manufacture of beds, air beds, valances, mattresses, air mattresses, futon mattresses, inflatable mattresses, mattress cushions, mattress foundations, mattress toppers, spring mattresses, straw mattresses, mattress protector, mattresses made of flexible wood, nursery cots, cot bumpers, nursery furniture, play pens for babies, toy boxes, bedding for nursery cots, shelves being nursery furniture, sofas, sofa beds, sleeper sofas, extendible sofas, convertible sofa, sofa covers, woven fabrics for sofas, armchairs, wall sofa, cushions, furniture (also garden and office), mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, notice boards, workbenches, boxes of wood or plastic, bamboo, bamboo curtains, booster seats, baby-walkers, flower-stands, tables, table tops, bread baskets, bedroom furniture, cabinets (furniture), desks (furniture), rods for beds, slatted bases for beds, bedside cabinets (furniture), wardrobes (furniture), chest of drawers (furniture), bedside tables (furniture), dressing tables (furniture), furniture chests, furniture frames, furniture mouldings, furniture partitions, furniture parts, furniture (shelves), futons, headrests (furniture), upholstered furniture, bumper guards for furniture, furniture for displaying goods, furniture made of metal, dining room tables, dining room chairs, fittings for dining room furniture, furniture (dining room), living room furniture, benches, benches, deckchairs, furniture doors, door fittings not of metal, bottle racks, footstools, nesting boxes, armchairs, lockers, curtain hooks, curtain holders, tie-backs, curtain rings, curtain rails, curtain poles, curtain pulls, plate glass, hinges (not of metal), headrests, shelves for filing cabinets, shelves for storage, shelves, coat hangers, clothes hooks (not of metal), washstands (furniture), office furniture, baskets (not of metal), handling pallets (not of metal), chests for clothing, blankets or laundries, mouldings for picture frames, picture frame brackets, sideboards, medicine cabinets, keyboards for hanging keys, umbrella stands, slatted indoor blinds, woven wooden blinds, draughtman's tables, trolleys, desks, school furniture, writing desks, display stands, screens, sleeping bags, ladders, chairs, plate racks, Household and kitchen utensils, tableware, glassware, porcelain, stoneware and chinaware, porcelain, ceramic and pottery ware, tea services and coffee services, ornaments, baskets, candlesticks, candle holders and candelabras, coasters, napkin holders, household, kitchen and cooking utensils and containers as well as parts and equipment for the same not included in other categories, crockery, drinking vessels, sponges, brushes, cleaning materials, glassware, porcelain, china, earthenware not included in other categories, abrasive pads for use in the kitchen, steel wool, bowls, basins, drinking containers, ironing boards, bootjacks, shoetrees, bottle openers, bottles, bowls, breadbaskets, breadboards, cheeseboards, chopping boards, brooms, mops, tubs, buckets or pails, butter dishes, cake moulds, chamber pots, clothes drying racks, manual coffee grinders and non-electrical coffee filters, frying pans, cooking pots, ice buckets, corkscrews, cake moulds, egg cups, cups, beakers, tumblers, pitchers, saucers, dishes, sauce and gravy boats all made of materials other than precious metals, dishes, fruit bowls, glasses (containers), soap dispensers and holders, dusting cloths, feather dusters, bottles, flower pots, flower-pot covers, fly whisks, funnels, refuse bins, jars, grill pans, cooking moulds and stands, napkin rings and holders not made from precious metals, tableware, salt and pepper mills, mustard pots, dustbins, rolling pins, watering cans, watering-can spray heads, saltcellars not made of precious metals, sieves (household utensils), spice sets, tea strainers, caddies and infusers, tea services and teapots all made of materials other than precious metals, toilet bags, toilet-paper dispensers, tooth-brushes, toothpicks, trays or baskets for domestic use and not made of precious metals, insulated bottles and flasks, vases, glass ornaments, statuettes and pomanders, refuse bins, non-electrical whisks, beaters and percolators for domestic use, candlesticks not made of precious metals, decanter stands other than those made of paper or fabric, cake dishes not made of precious metals, decanters not made of precious metals, porcelain and china knobs, mincers, ice cream moulds, carpets, rugs, mats and matting, linoleum and other materials for covering floors, wall hangings (non-textile), mats (for bath, car, door, linoleum), carpet underlay all provided through retail and wholesale outlets, including through shops, through mail order catalogues or by means of electronic media, including through web sites.

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 ´Canon´ criteria).

Contested goods in Class 20

The contested goods are various types of furniture and parts thereof, mirrors, picture frames and other goods for furnishing or decorating a house, garden or office, including goods made of rare or expensive materials.

The opponent’s goods include data processing apparatus, hardware, software, peripherals and accessories, and data carriers in Class 9; office requisites, teaching materials and printed matter in Class 16; business management and advertising in Class 35; communication services in Class 38; education and entertainment and cultural services in Class 41; and IT services in Class 42.

There are no relevant points of contact between the contested goods and the opponent’s goods and services, based on the ‘Canon’ criteria listed above. It follows that the contested goods and the opponent’s goods and services are dissimilar.

Contested goods in Class 21

The contested goods are small, hand-operated utensils and appliances for household and kitchen use, as well as toilet utensils, glassware and porcelain. The contested goods do not coincide with the opponent’s goods and services in the ‘Canon’ criteria listed above, as to give rise to a level of similarity. It follows that the contested goods and the opponent’s goods and services are dissimilar.

Contested goods in Class 24

The contested goods in Class 24 are textiles and textile covers for household use. There are no relevant points of contact between the contested goods and the opponent’s goods and services, based on the ‘Canon’ criteria listed above. It follows that the contested goods and the opponent’s goods and services are dissimilar.

Contested services in Class 35

The opponent’s advertising services, covered by the earlier Portuguese mark, consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The opponent’s business management services, covered by the earlier EUTM, are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested advertising of beds; advertising of mattresses; advertising of furniture; advertising of sofas; advertising of sofa beds; advertising on the internet; television advertising are included in the broad category of the opponent’s advertising services. It follows that these services are identical.

The contested brand testing could be a phase in building an advertising campaign for a company or product. Therefore, the contested services are included in or at least overlap with the opponent’s advertising services. These services are considered identical.

The contested business services and advice on the commercialization of goods and services; book-keeping are included in the broad category of the opponent’s business management services. It follows that these services are identical.

The contested business administration services consist of organising people and resources efficiently to direct activities toward common goals and objectives. These services are performed to plan, organise and run a business and include the provision of information in relation to these services. These services, therefore, include, as a broader category, the opponent’s commercial business information (which includes providing information about commercial activities required for the running of the business). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The rest of the contested services in Class 35 are wholesale and retail services of a number of different goods that are, however, dissimilar to the opponent’s. The contested retail services consist in bringing together, and offering for sale, a number of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop, and the contested wholesale services are the offering for sale of the products in question to retailers. This is not the purpose of the opponent’s goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail and wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar. It follows that the contested services are dissimilar to the opponent’s goods.

Based on the ‘Canon’ criteria, these contested services and the opponent’s services have nothing relevant in common either. It follows that these services are dissimilar.

1. 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. The degree of attention may vary from average to higher than average; for example, the degree of attention would be higher than average with regard to expensive advertising campaigns.

3. The signs

1) Portuguese trade mark No 348 473

WE DO

2) EUTMR No 4 824 884

WEDO SOLUTIONS

Earlier trade marks	Contested sign

The relevant territories are Portugal in the case of the earlier Portuguese mark and the European Union in the case of the earlier EUTMR.

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 earlier marks are word marks; the Portuguese mark consists of the elements ‘WE DO’ and the EUTMR of the elements ‘WEDO SOLUTIONS’. The earlier Portuguese trade mark would not be understood as having a particular meaning by the relevant public.

The element ‘WEDO’ of the earlier EUTMR has no particular meaning for the relevant public. However, the English-speaking part of the relevant public is likely to perceive this element as a juxtaposition of the words ‘we’, as in ‘the subjective case of the first person plural pronoun’ (see http://www.oed.com/view/Entry/226539?rskey=RJGkub&result=1&isAdvanced=false#eid), and ‘do’, as in the verb ‘do’, with the meaning of, inter alia, ‘to perform or complete (a deed or action); to prepare or provide; serve’ (see http://dictionary.reverso.net/english-definition/do). Therefore, the element ‘WEDO’ is likely to be perceived by the English-speaking part of the relevant public in the meaning of ‘we perform/we provide’. The element ‘SOLUTIONS’ will be understood by the English-speaking part of the relevant public as the plural form of the word ‘solution’, with the meaning of, inter alia, ‘a specific answer to or way of answering a problem; the act or process of solving a problem’ (see http://dictionary.reverso.net/english-definition/solution). It is likely that the entire earlier mark will be understood by the English-speaking part of the public with the meaning of ‘we provide answers’ or even ‘we solve a problem’. For the rest of the relevant public, the trade mark as a whole will not have a meaning; however, the element ‘SOLUTIONS’ will also be understood by other parts of the public, where the equivalent word in the relevant language is the same (e.g. the French-speaking part of the public) or similar (e.g. the Spanish-speaking part of the public (‘solución’)). For part of the relevant public (e.g. the Bulgarian-speaking part), the element ‘SOLUTIONS’ will have no meaning.

The contested sign is a figurative mark consisting of the element ‘wedo’, written in bold lower case letters; the component ‘we’ is black and the component ‘do’ is orange. The element ‘wedo’ is preceded by an orange stylised image of fingers making an affirmative gesture, with the thumb and forefinger connected to form a circle and the rest of the fingers pointing upwards. The element ‘WEDO’ in the contested sign has no particular meaning for the public in the relevant territory; however, it is likely to be understood by the English-speaking part of the relevant public as a juxtaposition of the words ‘we’ and ‘do’ with the meaning specified above. The figurative device is likely to be perceived as a gesture of approval, which further underlines the positive connotation of the verbal element.

The earlier Portuguese mark has no element that could be considered clearly more distinctive than other elements.

The element ‘WEDO’ in the earlier EUTMR and in the contested sign is likely to be understood by the English-speaking part of the relevant public in the meaning of ‘we perform/we provide’. Bearing in mind that the relevant services are rendered by providing/performing them, it is considered that the element is weaker than average for the relevant services.

The element ‘SOLUTIONS’ of the earlier EUTMR will be associated with ‘a specific answer to or way of answering a problem’ by a part of the relevant public. Bearing in mind that the relevant services are business management services in Class 35, which are intended to provide solutions for one’s business, this element is weak for these services, as it refers to their subject matter or the result of their provision.

The earlier EUTMR as a whole is likely to be understood by the English-speaking part of the public in the meaning of ‘we provide answers’ or even ‘we solve a problem’. The elements in combination form a laudatory phrase, highlighting the qualities of the services in question, namely that they are intended to solve problems. It is therefore considered that the elements in combination are weaker than average for the relevant services and for the part of the public that would understand them as having the meaning specified above.

The figurative device of the contested sign is likely to be associated with an affirmative gesture or a gesture of approval. It is therefore considered that the element is laudatory, as it highlights the qualities of the services in question. It follows that this element is weaker than average for the relevant services.

None of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the element(s) ‘WE DO’/’WEDO’, and, even though these elements differ in their separation into two components in the earlier Portuguese mark, while in the contested sign they form one element, ‘wedo’, in the contested sign the components ‘we’ and ‘do’ are nonetheless visually differentiated by their depiction in different colours. The coinciding element(s) is of weaker than average distinctiveness for the English-speaking part of the relevant public and it is of normal distinctiveness for the rest of the relevant public. The signs differ in the element ‘SOLUTIONS’ of the earlier EUTMR and in the figurative device (which is weaker than average for the relevant public) and the colours of the contested sign.

When signs consist of both verbal and figurative components (which is the case in the contested sign), 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; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Furthermore, in the contested sign, the figurative element underlines the positive connotation of the verbal element for at least part of the relevant public.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from 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, the fact that the coinciding sequence ‘WE DO’/’WEDO’ is the first element of the earlier EUTMR and the only verbal element(s) of the earlier Portuguese mark and the contested sign is of material importance when assessing the likelihood of confusion between the marks at issue.

Therefore, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the element(s) ‘WE DO’/’WEDO’, present in all the signs. The separation of the elements of the earlier Portuguese mark, by contrast with the one-word element ‘WEDO’ of the contested sign, has little (if any) significance for the aural comparison of the signs, as the element(s) ‘WE DO’/’WEDO’ would be pronounced in two syllables with a natural speech segmentation between them. The pronunciation differs in the sound of the element ‘SOLUTIONS’ in the earlier EUTMR, which has no counterpart in the contested sign.

Therefore, the earlier Portuguese trade mark and the contested sign are aurally identical or at least highly similar; the earlier EUTMR and the contested sign are aurally similar to at least an average degree.

Conceptually, as far as the earlier Portuguese mark and the contested sign are concerned, while the public in the relevant territory will perceive the figurative element of the contested sign as an affirmative gesture, the earlier Portuguese mark lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As far as the earlier EUTMR and the contested sign are concerned, the English-speaking part of the relevant public will perceive the earlier mark as ‘we provide answers’ or even as ‘we solve a problem’ and the contested sign as ‘we provide’ with an affirmative gesture. As the signs coincide in the concept of ‘we provide’, the signs are conceptually similar to at least an average degree for this part of the public. For the part of the public that understands only the element ‘SOLUTIONS’ in the earlier mark and/or the figurative element of the contested sign, 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 marks

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 EUTMR is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier EUTMR 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 lower than average for the services in question, namely business management services in Class 35, and for the part of the relevant public that understands the earlier mark as a laudatory phrase, namely the English-speaking public. The mark has a normal degree of distinctiveness for the remaining part of the relevant public, for which the mark as a whole has no meaning in relation to the services in question, despite the presence of a weak element in the mark for a part of the public, as stated above in section c) of this decision.

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

Consequently, the assessment of the distinctiveness of the earlier Portuguese 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 Portuguese mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested services are partly identical and partly dissimilar and the contested goods are dissimilar to the opponent’s goods and services. The degree of attention may vary from average to higher than average when choosing the relevant services.

The signs coincide visually and aurally (as regards the earlier Portuguese mark) in the element(s) ‘WE DO’/’WEDO’, despite the separation of the sequence of letters into two elements in the earlier Portuguese mark, while in the contested sign the element is divided instead by the different colours of the components ‘we’ and ‘do’. The signs differ in the element ‘SOLUTIONS’ of the earlier EUTMR, as well as in the colours and the figurative device of the contested sign.

As explained above, when signs consist of both verbal and figurative components (which is the case in the contested sign), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Therefore, it is likely that the public, when encountering the contested sign, would focus on the coinciding sequence ‘wedo’. Moreover, the figurative element has a laudatory meaning, as it is a depiction of an affirmative gesture. Therefore, as far as the earlier Portuguese mark and the contested sign are concerned, it is likely that the relevant public would perceive the contested sign, used on the services found to be identical, as a modernised depiction of the earlier Portuguese mark.

As mentioned above, the earlier EUTMR has a lower than average degree of distinctiveness for the services in question for the English-speaking part of the relevant public. However, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case law that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

As far as the earlier EUTMR and the contested sign are concerned, the coinciding sequence ‘WEDO’ will be perceived by the English-speaking part of the relevant public as conveying the concept of ‘we perform/provide’, which is weaker than average for the relevant services. Moreover, for the same part of the public, the element ‘SOLUTIONS’ in the earlier mark supplements the perceived meaning of the first element ‘wedo’, specifying the result. The figurative element of the contested sign, being a symbol of affirmation, only highlights the qualities of the services in question. Therefore, the public that understands the meaning of the entire phrase in the earlier EUTMR, even though it is laudatory, is likely to perceive the contested sign as a modernised and shortened version of the earlier mark, used as a way to help make the mark memorable and allow it to be referred to quickly.

This conclusion also applies to the part of the relevant public that would perceive a meaning only in the element ‘SOLUTIONS’ of the earlier EUTMR and/or in the figurative element of the contested sign, as the element ‘WEDO’ is of normal distinctiveness. It is, furthermore, the first element of the earlier mark, clearly separated from the other element, and the only verbal element of the contested sign, in which the figurative element has a laudatory meaning.

In addition, 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 issue, the identity of the services offsets any lesser degree of similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 348 373 and European Union trade mark registration No 4 824 884.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade marks.

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 goods and services cannot be successful.

The opponent has also based its opposition on earlier Portuguese trade mark No 425 591 for the following goods and services:

Class 9: Computer software; computers; computer adapters; computer components; computer parts and fittings; intercoms; microcomputers; minicomputers; microphones; computer memories; interfaces for computers; data processing equipment; interfaces for computers; data processing equipment; machines for processing data/memory devices for computers, random-access memory circuits, chips; semi-conductor devices, integrated circuits, electronic circuit boards, microprocessors; electronic circuits, terminals, controllers; integrated circuits; printed circuits; magnetic discs; diskettes; data modules; batteries and telecommunication equipment; computer software networks, wide area networks and global computer networks; computer software used for developing software and creating web sites (“web authoring”); security devices regarding computers for portable computer products; boxes and cases (for computers, computer peripherals and computer materials); computer programs; operating system software and application software; documentation and instruction manuals recorded on machine-readable media or on paper, regarding computers or computers programs.

Class 16: Books; documentation for computer programs computer, computer components, computer peripherals user manuals, reference manuals and technical manuals data lists, templates and reference cards; periodicals magazines and information bulletins; labels and holographic labels.

Class 35: Organisation, management, production and promotion of trade fairs and exhibitions of a commercial nature on computer hardware, computer software, telecommunications and high technology and in the field of system and computer program development; supply of business information, commerce and business communication over computer networks and global communications networks; business management and commercial consultancy services provided over computer networks and global communications networks; marketing and advertising, especially promoting the goods and services of others via computer networks, wireless networks and global communications networks; advertising services and business management for third parties, especially assistance to third parties with regard to advertising by direct electronic mail, assistance to third parties in the installation and management of advertisements on computer networks and global communications networks; online services for business information, especially the purchase of office equipment for third parties; supply of business information over computer networks and global communications networks; billing services; provision of business information by users on computer networks, wireless networks and global communications networks, sales promotion of computer software for third parties.

Class 41: Organisation, management and holding of business conferences on computer hardware, computer software, telecommunications and high technology, system and computer program development, computer services.

Class 42: Computer programming; design, updating and maintenance of computer software; design, installation, interconnection, tests and maintenance of software and data for computers; services relating to computer products; technical consultancy and support services for computer project studies in the field of computer software and hardware; consultancy in the field of computer software; computer system analysis; advice and consultancy regarding computer programs; computer software rental, distribution, licensing and sublicensing; scientific and industrial research; technical support for computer programs; services for web sites on the internet.

There are some additional goods and services covered by Portuguese trade mark No 425 591 that do not appear in the lists of the other earlier rights already compared above. These are, however, either identical or similar to at least a low degree (namely all the services in Class 35) to some or all of the contested services for which the opposition has already been upheld, or they are clearly dissimilar to the remaining contested goods and services, either because they fall within the same general categories as the services of the marks already compared above (e.g. advertising, business management) or because, under the ‘Canon’ criteria listed above, they (e.g. labels and holographic labels in Class 16) have no points of contact that could lead to a finding of similarity to the remaining, dissimilar, goods and services.

Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services and this other earlier right.

Since the opposition was only partially successful on the ground of Article 8(1)(b) EUTMR, the Opposition Division will further proceed with the examination on the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed reputation for earlier Portuguese trade mark registrations No 348 473 and No 425 591 for all the goods and services for which the marks are registered, which are listed above.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 19/11/2013 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/11/2015.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

Eamonn KELLY

Natascha GALPERIN

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.