OPPOSITION No B 2 493 818

Certitec Consultores Iberica, S.L., Camino de Vecilla, N. 1 - 1 C, 24768 Huerga de Garaballes, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Masarykova univerzita, Žerotínovo náměsti 9, 60177 Brno, Czech Republic (applicant), represented by Petr Soukup, Videňská 8, 772 00 Olomouc, Czech Republic (professional representative).

On 12/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 493 818 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 144 803, namely against all the goods and services in Classes 9, 35 and 42. The opposition is based on Spanish trade mark registration No 2 693 160. The opponent invoked Article 8(1)(b) 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.

1. The goods and services

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

Class 42: Scientific and technological services as well as research and design services related thereto; industrial analysis and research services; design and development of computers and software; legal services.

In its argumentation, the opponent also refers to the applicant’s services in Class 45 as contested services. However, the Opposition Division notes that the services of this class were not initially contested when the notice of opposition was filed and they were included amongst the contested goods and services only after the expiration of the three-month opposition period, namely on 19/03/2015. The scope of the opposition cannot be extended after this period and, therefore, this constitutes an inadmissible extension of the scope of the opposition. Therefore, Class 45 will not be a subject of the present examination.

The contested goods and services are the following:

Class 9: Software; Carriers for sounds, images, texts or other data or information, including CDs, DVDs, audio and video cassettes and tapes, data, databases, database products, database systems; Information and records in electronic form, stored on independent carriers and/or within data, information or telecommunications networks, including carriers with instructional and educational computer programs and instruction programs; Electronic magazines; Electronic periodicals and books in electronic form; Software and hardware related thereto, including electronic multimedia applications, multimedia or information catalogues and applications for viewing, processing or storage of data in electronic form; Testing, diagnostic, regulating and other scientific, photographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; Instructional apparatus; Electric apparatus for testing of samples, electric laboratory apparatus, electric apparatus for implementation of research, electric measuring apparatus, electric signalling apparatus, electric communications apparatus, electric testing apparatus, electric topographic apparatus, electric control apparatus, electric checking apparatus, electric monitoring apparatus, electric weighing apparatus, electric traffic guidance apparatus, electric process control and inspection apparatus, electric remote control apparatus (control units), electric apparatus for checking electricity, robotically operated electric checking apparatus, electric temperature-regulating apparatus, electric information storage apparatus, apparatus and instruments for switching electricity, apparatus and instruments for regulating and transforming electricity, apparatus and instruments for accumulating and storing electricity, electronic apparatus; Apparatus for recording, retransmission or reproduction of sound or images.

Class 35: Market research and opinion polling, marketing, business research and information, organisational, economic and accounting consultancy, business appraisals, automatic data processing, advertising, economic and organisational consultancy, business-economics consultancy, preparation of expert assessments in the field of business economics.

Class 42: Computer software design; Development of programs and processing of software; Development of multimedia presentations (programming); Surveying in the field of computer equipment and information technology; Rental of computer software; Designing; Surveying, scientific, research and development activities and consultancy in the field of technical and natural science; Engineering services; Surveying; Calibration; metering; Research and development (for others); Biological, medical, technical and physical research; Research relating to mechanical engineering; Preparation of expert assessments in the field of transport, electronics, electrical engineering, energy, metallurgy, construction drafting, construction, mechanical engineering and water management, technical consultancy in the field of patent exploitation and transfer of technology.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 opponent’s design and development of […] software in Class 42 are the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

On the other hand, the contested software itself is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. As software services are closely linked to software, the goods and services in question are considered similar. This is because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Likewise, the contested software and hardware related thereto, including electronic multimedia applications, multimedia or information catalogues and applications for viewing, processing or storage of data in electronic form are similar to the opponent’s services mentioned above. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. In addition, these goods and services are complementary.

Furthermore, the contested carriers for sounds, images, texts or other data or information, including CDs, DVDs, audio and video cassettes and tapes, data, databases, database products, database systems are similar to the opponent’s design and development of computers and software, since they may have the same relevant public and distribution channels. Furthermore, the goods and services are complementary to each other. The same applies to the contested information and records in electronic form, stored on independent carriers and/or within data, information or telecommunications networks, including carriers with instructional and educational computer programs and instruction programs, electronic magazines; electronic periodicals and books in electronic form, which are, therefore, similar to the opponent’s services.

The contested apparatus for recording, retransmission or reproduction of sound or images is used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. The contested electric communications apparatus serves such communication purposes as sending and receiving information. The goods are considered similar to the opponent’s services mentioned above, since they may have the same relevant publics, distribution channels and origins. They may be complementary to each other.

The contested testing, diagnostic, regulating and other scientific, photographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; instructional apparatus; electric apparatus for testing of samples, electric laboratory apparatus, electric apparatus for implementation of research, electric measuring apparatus, electric signalling apparatus, electric testing apparatus, electric topographic apparatus, electric control apparatus, electric checking apparatus, electric monitoring apparatus, electric weighing apparatus, electric traffic guidance apparatus, electric process control and inspection apparatus, electric remote control apparatus (control units), electric apparatus for checking electricity, robotically operated electric checking apparatus, electric temperature-regulating apparatus, electric information storage apparatus; apparatus and instruments for switching electricity, apparatus and instruments for regulating and transforming electricity, apparatus and instruments for accumulating and storing electricity, electronic are mostly different types of electric/electronic apparatus that are used for different scientific and technical purposes. However, in today’s high-tech society, almost all electronic or digital apparatus uses integrated software. This does not, however, lead to the automatic conclusion that, for example, software or related engineering and design services are similar to goods that use software to function successfully. The contested goods and the opponent’s services are intended for different publics and are distributed through different channels. In addition, the goods and services will not have the same method of use or producers/providers. Therefore, the goods are dissimilar to the opponent’s services in Class 42.

Contested services in Class 35

The contested market research and opinion polling, marketing, business research and information, organisational, economic and accounting consultancy, business appraisals, automatic data processing, advertising, economic and organisational consultancy, business-economics consultancy, preparation of expert assessments in the field of business economics are all services intended to support a business or to help it improve as an economic entity. For example, the contested advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring a competitive advantage through publicity. Advertising agencies usually provide related services such as the contested market research and opinion polling, marketing, business research and information, automatic data processing.

Furthermore, the contested business appraisals involve investigating the nature and potential of a business and assessing its performance in relation to its competitors. Likewise, the contested economic and accounting consultancy, economic and organisational consultancy, business-economics consultancy, preparation of expert assessments in the field of business economics may be grouped as business consultancy-related services provided by specialised agencies and management consultants with the goal of increasing efficiency and production, reducing tax bills, creating a corporate identity, etc.

It is presumed that the contested services in Class 35 target a professional public and, unlike the opponent’s services in Class 42, in particular scientific and engineering services, they will most likely concern a public with a background in economics. Furthermore, the services in question have different purposes and methods of use, as well as different distribution channels. Consumers will not expect the same businesses to render them, as they belong to fundamentally different fields. Therefore, these services are considered dissimilar.

Contested services in Class 42

Computer software design; development of programs are identically contained in both lists of goods and services, albeit in slightly different wordings.

The contested processing of software; development of multimedia presentations (programming) are included in or overlap with the opponent’s design and development of computers and software. They are identical.

The contested designing; surveying, scientific, research and development activities and consultancy in the field of technical and natural science; engineering services; surveying; calibration; metering; research and development (for others); biological, medical, technical and physical research; research relating to mechanical engineering; preparation of expert assessments in the field of transport, electronics, electrical engineering, energy, metallurgy, construction drafting, construction, mechanical engineering and water management, technical consultancy in the field of patent exploitation and transfer of technology; surveying in the field of computer equipment and information technology are included in or overlap with the opponent’s scientific and technological services as well as research and design services related thereto. They are identical.

The contested rental of computer software is similar to the opponent’s design and development of computers and software, as they may coincide in their relevant public and distribution channels, as well as in their origin.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the identical and similar services in Class 42 mostly target business customers with specific professional knowledge or expertise in the relevant area, but the identical and similar goods in Class 9 (e.g. software, data carriers, electronic magazines, etc.) also target the general public. The degree of attention is still considered to vary between average and high, and will be particularly high for the services in Class 42 involving scientific, technical and engineering activities, where a significant level of skills and knowledge are required.

3. The signs

	CEITEC
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a figurative mark consisting of the verbal element ‘certitec’, comprising the letter sequences ‘certi’ and ‘tec’ written in blue and violet, respectively, with the word ‘consultores’ placed underneath in lower case letters and a figurative element of a coloured spiral depicted to the left.

The contested sign is a word mark consisting of the single verbal element ‘CEITEC’.

The element ‘consultores’ of the earlier mark will be associated with ‘an advisor’ (Collins Dictionary online). Bearing in mind that the relevant services may be, in essence, advisory services in different scientific, design, research and development fields, this element is weak for all the relevant services. Furthermore, the verbal part ‘TEC’, due to its distinct graphical depiction in the earlier mark, will be seen by the relevant public as a short form of the Spanish word ‘tecnológico(s)’ or ‘técnico(s)’. Since the services provided in Class 42 may generally involve or relate to some sort of technology, regardless of their field of application, this element is considered to have limited distinctiveness for these services. The public will understand the abovementioned elements and will pay less attention to them than to the other, more distinctive, verbal element in the mark, namely the more distinctive verbal element ‘CERTI’.

Likewise, it cannot be ruled out that a significant part of the public will also recognise the verbal element ‘TEC’, mentioned above, in the last part of the contested sign. Consequently, this element will possess a low degree of distinctiveness for the relevant services in Class 42, as well as for the goods in Class 9, which are considered basic and more sophisticated technological products. Therefore, this element will also be regarded as less important than the first, more distinctive, part of the contested sign, namely ‘CEI’.

The contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements. However, in the earlier mark the word ‘consultores’ is written in small letters at the bottom and, consequently, is considered less striking than the other elements.

Visually, the signs coincide in the letters ‘CE**ITEC’, which are part of the more outstanding verbal element in the earlier mark. However, they differ in the additional letters ‘RT’ in the middle of the earlier mark. Furthermore, the signs differ in the graphical depiction of the verbal elements, including of the connected letter strings ‘certi’ (in blue) and ‘tec’ (in violet), as well as in the additional figurative element in the shape of a spiral and the additional word ‘consultores’ in the earlier mark. Therefore, taking into account the limited distinctiveness of some of the elements, the signs are visually similar to a low degree.

Aurally, although the sounds of several letters of both signs, namely ‘CE**ITEC’, are deemed to be identical, the pronunciation of the signs will, in fact, coincide in only one syllable, ‘TEC’, which is the last sound that they have in common. Furthermore, the pronunciation will differ in the first two syllables, ‘CER-TI’, in the earlier mark, compared with the diphthong ‘CEI’ in the contested sign, both of which are at the beginnings of the signs. Taking into account the less prominent position and the limited distinctiveness of the word ‘consultores’ and the weak distinctive character of the element ‘TEC’ (in particular in the earlier mark but also in the contested sign for a significant part of the public), the signs are aurally similar to an average degree.

Conceptually, alongside the Spanish word ‘consultores’ (the meaning of which is explained above), the public in the relevant territory will perceive the other verbal element in the earlier sign as an invented word as a whole. However, due to the different graphical depictions of the two connected verbal parts, ‘certi’ and ‘tec’, that element as a whole will most likely bring to mind the concepts of the Spanish words ‘certificado(s)’ or ‘certificación’ and ‘tecnológico(s)’ or ‘técnico(s)’. Consequently, although meaningless as a whole, this verbal element will be dissected as alluding to these particular concepts, while the other sign lacks any meaning in the relevant territory as a whole or will be associated only with the weak element ‘TEC’. Therefore, since the contested sign will not be associated with any additional meaning conveyed by its distinctive element, the signs are considered to be conceptually similar to a low degree.

As the signs have been found similar to a certain degree from a visual and aural point of view, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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, despite the presence of some weak elements as indicated above in section c).

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical and similar, and partly dissimilar. The degree of attention will range between average and high, depending on the goods and services concerned; in particular, it will be higher in relation to the services in Class 42.

The signs are similar to the extent that they have the letter sequence ‘CE**ITEC’ in common. However, as has been illustrated in section b), besides the weak word ‘consultores’, the second part of the earlier mark, namely ‘TEC’, is of limited distinctiveness in relation to the conflicting services and it will not be paid as much attention by consumers as the verbal element at the beginning of the sign, namely ‘CERTI’. The difference between the beginnings will be reinforced for the part of the public that will recognise ‘TEC’ as weak also in the contested sign and will focus instead on the more distinctive beginning, ‘CEI’.

As discussed above, the public may perceive the verbal element ‘CERTI’ as a reference to ‘certificado(s)’ and, therefore, the average consumer will most likely recognise this as a linguistic play on words, grasping the concept this element conveys. Unlike the earlier mark, the only concept deemed to be perceptible in the contested sign is that of the weak verbal element ‘TEC’. In addition, although the signs coincide in the pronunciation of their coinciding letters ‘CE**ITEC’, the lengths of the signs and also their rhythms and intonations differ, as demonstrated in the aural comparison above.

Therefore, the similarities between the signs are not sufficient to counteract the differences, especially taking into account the heightened degree of attention for many of the conflicting goods and services. As a consequence, they cannot lead to a likelihood of confusion in this case.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the opponent are not relevant to the present proceedings, since they examined different scenarios and circumstances regarding the relevant goods and services, the distinctive elements of the signs and their conceptual comparison. Therefore, the same findings cannot be applied and the present case must be assessed on its own merits.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the 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 Rule 94(7)(d)(ii) EUTMIR, 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

Benoit VLEMINCQ

Loreto URRACA LUQUE

Erkki MÜNTER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.