OPPOSITION No B 2 238 346

Alonso Inceptio SL, Avda Pintor Felo Monzon, nº34 Planta Baja, 35019 Las Palmas de Gran Canaria, Spain (opponent), represented by García, Domínguez & Asociados, Plaza del Corrillo, 19, 3° - 2, 37002 Salamanca, Spain (professional representative)

a g a i n s t

Vas System Limited, 109-111 Blackburn Street, Manchester M26 3WQ, United Kingdom (applicant), represented by Brabners LLP, Horton House, Exchange Flags, Liverpool, Merseyside L2 3YL, United Kingdom (professional representative).

On 15/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 238 346 is upheld for all the contested goods and services.

2. Community trade mark application No 11 717 105 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 11 717 105. The opposition is based on Community trade mark registration No 10 199 081. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

On 06/09/2013 the Office informed the applicant that, inter alia, the deadline for submitting observations in response to the opposition expired on 11/03/2014. On 21/03/2015 the applicant submitted a request for an extension of that term. It claimed that it had unsuccessfully attempted to apply for an extension on 10/03/2014 – one day before the expiry of the initial. On 12/05/2014 the applicant submitted its observations.

After an internal investigation of its IT tools and system, on 21/05/2014 the Office informed the applicant that the only communication received from it on 10/03/2014 concerned an extension request in relation to another set of opposition proceedings. Subsequently, on 04/06/2014, the Office invited the applicant to submit, by 04/07/2014, proof, such as a reference number, of the submission of the extension request. No materials were received within the term set.

Accordingly, in the absence of a valid extension request, the applicant’s observations of 12/05/2014 are belated and the present decision will not take them into consideration.

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.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Fire-extinguishing apparatus.

Class 35: Advertising; Business management; Business administration; Office functions.

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

Class 45: Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals.

After a limitation by the applicant, the contested goods and services are the following:

Class 9: Software; computer programs; application software; web-based software; computer software; communication software; processing software; computer programs for data processing; computer programs for image processing; computer programs stored in digital form; computer software downloaded from the internet; computer software for wireless content delivery; computer software packages; computer software programs; computer software platforms; computer software to enable the transmission of photographs to mobile telephones; data communications software; data compression software; data processing software; data processing software for graphic representations; downloadable computer software; downloadable computer programs; interactive computer software; interactive video software; pre-recorded software; satellite imagery photo-interpretation software; simulation software; simulation software for use in computers; simulation software for use in mobile telephones; virtual reality software; reconstruction software; vehicle accident/crash reconstruction software/programs; vehicle accident/crash reconstruction mobile telephone applications; vehicle accident/crash simulation software/programs; vehicle accident/crash simulation mobile telephone applications; vehicle accident/crash animation software/programs; vehicle accident/crash animation mobile telephone applications; vehicle accident/crash visualization software/programs; vehicle accident/crash visualization mobile telephone applications; occupant reconstruction/simulation software/programs in vehicle accident/crash; occupant reconstruction/simulation mobile telephone applications in vehicle accident/crash; image databases; vehicle image databases.

Class 35: Fleet and/or commercial vehicle management and administration services; data services; data processing services; advertising services; advertising services relating to the motor vehicle industry; advertising services relating to databases; business services; business management of a vehicle fleet/commercial vehicles; assistance, advisory services and consultancy with regard to business management of commercial/fleet vehicles; management, assistance, advice and business consultation regarding accident management; administration of business affairs; advisory service for organisational issues and business administration, with and without the help of electronic data bases; business consultancy relating to the administration of vehicle accidents; advisory services and consultancy with regard to management of accidents especially road accidents; data analysis; data processing services both on and off-line; automated data processing; computerised data processing electronic data processing; advisory services relating to electronic data processing; analysis of market research data; automated data processing; business consultancy services relating to data processing; business data analysis; business data analysis services; collection of data; collection and systematisation of information and data into computer databases; compilation of databases relating to vehicle accidents; computer data processing and/or management; data compilation for others; electronic data processing; advisory services relating to electronic data processing; provision of information relating to data processing.

Class 36: Financial Services; financial services being claims handling services, claims processing services, and the provision and facilitation of compensation; financial services relating to the insurance of motor vehicles; financial services relating to claims handling and/or processing services; provision and facilitation of compensation especially relating to vehicle accidents; claims handling services; financial services relating to accident management, accident compensation, personal injury claims and the recovery and storage of costs.

Class 42: Software services; web based software; advisory services relating to computer software; advisory services relating to computer software used for graphics; computer software technical support services; configuration of computer software; consultancy and advice on computer software; design, creation, writing, updating, maintenance and adaptation of software especially virtual reality software; image processing software design; rental of application software; rental of software for internet access; software design and authoring; software development services; provision of advice, consultancy and information in relation to all of the above.

Class 45: Accident investigation; compilation of legal information; licensing of computer software; management services in relation to legal claims for accidents; provision of advice, consultancy and information in relation to all of the above.

The earlier Community trade mark No 10 199 081 is registered for the entire class headings of, inter alia, Classes 9, 35, 36, 42 and 45 of the Nice Classification. It was filed on 16/08/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

As regards Class 9, it is noted that the English translation of the opponent’s goods in that class does not include the full class heading in that the ‘automatic vending machines’ are not included. However, the Spanish version of the opponent’s specification, which is the first language in the earlier CTM, does include the full class heading with these goods in it. Given this discrepancy, it must be determined whether the opponent’s specification in Class 9 covers all goods included in the alphabetical list.

The applicable provision in this case is Article 120(3) CTMR according to which, in case of doubt, the authentic language is the one in which the application was filed if that language is one of the five Office languages. In the present case, this CTM was filed in Spanish which is one of the languages of the Office. It follows that the Spanish version of the goods’ specification in Class 9 is the authentic one and that, accordingly, the earlier CTM is registered for the entire class heading and covers all goods in the alphabetical list in it.

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 contested software; computer software; computer programs are identically included in both specifications (in the alphabetical list of the earlier mark).

The contested application software; web-based software; communication software; processing software; computer programs for data processing; computer programs for image processing; computer programs stored in digital form; computer software downloaded from the internet; computer software for wireless content delivery; computer software packages; computer software programs; computer software platforms; computer software to enable the transmission of photographs to mobile telephones; data communications software; data compression software; data processing software; data processing software for graphic representations; downloadable computer software; downloadable computer programs; interactive computer software; interactive video software; pre-recorded software; satellite imagery photo-interpretation software; simulation software; simulation software for use in computers; simulation software for use in mobile telephones; virtual reality software; reconstruction software; vehicle accident/crash reconstruction software/programs; vehicle accident/crash reconstruction mobile telephone applications; vehicle accident/crash simulation software/programs; vehicle accident/crash simulation mobile telephone applications; vehicle accident/crash animation software/programs; vehicle accident/crash animation mobile telephone applications; vehicle accident/crash visualization software/programs; vehicle accident/crash visualization mobile telephone applications; occupant reconstruction/simulation software/programs in vehicle accident/crash; occupant reconstruction/simulation mobile telephone applications in vehicle accident/crash are all specific types of software be it for use on personal computer or mobile devices. These specific instances of software are included in the broad categories of the opponent’s software; computer software; computer programs included in the alphabetical list of the earlier mark in Class 9. Therefore, they are considered identical.

The contested image databases; vehicle image databases are databases with a specific content which, regard being had to their being classified by the applicant in Class 9, are electronic databases which could come in the form of a recorded software program. To the extent that this is the case there is an overlap with the earlier mark’s computer software (recorded); computer programs (recorded). The goods are therefore identical.

Contested goods in Class 35

The contested services in this class are either identically reproduced in both lists of services (advertising) or included in one of the general categories of the opponent’s specification. In particular, the contested advertising services relating to the motor vehicle industry; advertising services relating to databases are specific types of advertising; the contested fleet and/or commercial vehicle management and administration services; business management of a vehicle fleet/commercial vehicles; assistance, advisory services and consultancy with regard to business management of commercial/fleet vehicles; management, assistance, advice and business consultation regarding accident management; administration of business affairs; advisory service for organisational issues and business administration, with and without the help of electronic data bases; business consultancy relating to the administration of vehicle accidents; advisory services and consultancy with regard to management of accidents especially road accidents are various business management services rendered by companies specialised in a particular field and which aim to provide clients tools to better operate their activities. These services are specific instances of the opponent’s business management services.

The contested business services; advisory services relating to electronic analysis of market research data; business consultancy services relating to data processing; business data analysis; business data analysis services are services related to the operation of a business and in this regard they are specific business administration services which fall under the general category of the opponent’s services. The services are therefore identical.

The contested data services; data analysis; data processing; data processing services; data processing services both on and off-line; automated data processing; computerised data processing electronic data processing; automated data processing; collection of data; collection and systematisation of information and data into computer databases; compilation of databases relating to vehicle accidents; computer data processing and/or management; data compilation for others; electronic data processing; advisory services relating to electronic data processing; provision of information relating to data processing are office function services which are related to the daily running of an office and are of predominantly technical nature. All these services are included in the broad category of the opponent’s office function services. They are therefore identical.

Contested services in Class 36

The contested financial Services; financial services being claims handling services, claims processing services, and the provision and facilitation of compensation; financial services relating to the insurance of motor vehicles; financial services relating to claims handling and/or processing services; provision and facilitation of compensation especially relating to vehicle accidents; claims handling services; financial services relating to accident management, accident compensation, personal injury claims and the recovery and storage of costs are various types of financial services, either general ones or such relating to the area of vehicle insurance and accident and damage compensation. All these services, given their financial nature, fall under the broad category of the opponent’s financial affairs services. They are therefore identical.

Contested services in Class 42

The contested services in this class are software services; web based software; advisory services relating to computer software; advisory services relating to computer software used for graphics; computer software technical support services; configuration of computer software; consultancy and advice on computer software; design, creation, writing, updating, maintenance and adaptation of software especially virtual reality software; image processing software design; software design and authoring; software development services; provision of advice, consultancy and information in relation to all of the above. All these services consist in or relate to the creation of computer software. As such they fall under the broad category of design and development of computer hardware and software of the earlier mark.

The contested rental of application software; rental of software for internet access; consultancy and information in relation to all of the above are services which relate to the rental of a particular type of software (application software) or for a particular purpose (for internet access). They are included in the broad category of the opponent’s rental of computer software included in the opponent’s alphabetical list. They are therefore identical.

Contested services in Class 45

The contested compilation of legal information; licensing of computer software; management services in relation to legal claims for accidents; provision of advice, consultancy and information in relation to all of the above are various types of legal services related to accidents, the licensing of computer software or general ones. They are all included in the general category of the opponent’s legal services. They are identical.

The contested accident investigation relates to investigative activities aiming to establish the facts and details surrounding a particular accident. Such activity is carried out in the framework of rendering a legal services not least when it relates to a, say, compensation claim arising out of an accident, insurance claims etc. Accordingly, these services too are included in the broad category of the earlier legal services which include investigative activities related to both persons and property. They are therefore identical.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘VAS’. They differ in their remaining elements (figurative device in the contested mark and letter stylisation in the earlier mark (both marks are figurative).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs are aurally identical since their verbal elements are the same. The public will not describe the figurative device of the contested sign.

Conceptually, the majority of the public will not assign any meaning to the verbal component ‘VAS’ present in both marks.

At the same time the whole of the public will perceive in the figurative element of the contested sign a depiction of a car moving in a curved trajectory.

Finally, the Hungarian-speaking public will understand the coinciding element ‘VAS’ as meaning the material ‘iron’, the Romanian-speaking public as a ‘ship’ and the Swedish-speaking as a ‘vase’.

In view of the above the signs are not conceptually similar for those of the public who do not understand the element ‘VAS’ since only the contested sign will be assigned a concept – that of the figurative device.

At the same time, the signs are conceptually similar for those of the public who understand the verbal component.

Taking into account the abovementioned visual, aural and, for some, conceptual 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 earlier mark has no element that could be clearly considered more distinctive than other elements.

The figurative element of the contested sign will be associated with a vehicle because it contains a depiction of one. Bearing in mind that some of the relevant goods and services are software products, business, advertising and financial services expressly related to vehicles it is considered that this element is weakly distinctive for these goods and services, namely for vehicle accident/crash reconstruction software/programs; vehicle accident/crash reconstruction mobile telephone applications; vehicle accident/crash simulation software/programs; vehicle accident/crash simulation mobile telephone applications; vehicle accident/crash animation software/programs; vehicle accident/crash animation mobile telephone applications; vehicle accident/crash visualization software/programs; vehicle accident/crash visualization mobile telephone applications; occupant reconstruction/simulation software/programs in vehicle accident/crash; occupant reconstruction/simulation mobile telephone applications in vehicle accident/crash; vehicle image databases in Class 9; advertising services relating to the motor vehicle industry; fleet and/or commercial vehicle management and administration services; business management of a vehicle fleet/commercial vehicles; assistance, advisory services and consultancy with regard to business management of commercial/fleet vehicles; business consultancy relating to the administration of vehicle accidents in Class 35 and for financial services relating to the insurance of motor vehicles; provision and facilitation of compensation especially relating to vehicle accidents in Class 36. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark.

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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 are directed at the public at large and at a professional public. The degree of attention varies from average to higher than average in respect of the financial services given their impact on one’s personal or business budget.

6. Global assessment, other arguments and conclusion

The marks are similar and the goods identical.

As seen from the comparison of signs, the earlier mark is entirely reproduced by the contested sign’s only verbal element. This leads to an aural identity between the marks and to a conceptual similarity for part of the public.

In addition, the contested sign’s figurative element cannot compensate for said similarity not least because the public normally focuses on the verbal components of marks as it is by reference to them that consumers describe the signs. In addition, the depiction of a vehicle in the figurative device is weak for some of the services at issue. These considerations suffice to counteract any impact the figurative element produces in the overall impression created by the contested sign. For these reasons, the applicant’s arguments (even assuming they were to taken into consideration) in relation to the features of the figurative device cannot be accepted.

In addition, and for the sake of completeness, the applicant’s submissions regarding the opponent’s alleged bad faith in applying for the mark in all classes or in very different market sectors and that the earlier mark must be deemed invalid as it has not been used relate to a set of invalidity proceedings and were duly addressed and rejected in a final decision by the Office. They are therefore not to be re-examined in the present decision (even if they were considered as having been submitted on time).

Finally, any doubts as to the existence of a likelihood of confusion are definitively dispersed when the principle of interdependence is applied as all of the goods and services at issue are identical. This factor, coupled with the strong similarity between the signs, offsets the differences between the marks stemming from the figurative elements of the contested sign.

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

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 10 199 081. It follows that the contested trade mark must be rejected for all the contested goods and 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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Richard THEWLIS

Orlin DENKOV

Julie GOUTARD

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.