OPPOSITION No B 2 453 358

Tech Data Limited, Redwood 2, Crockford Lane, Chineham Business Park, Basingstoke, Hampshire RG24 8WQ, United Kingdom (opponent), represented by HGF Limited, 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)

a g a i n s t

Capillary Technologies International Pte Ltd., 1 Finlayson Green, #14-00 One Finlayson Green, Singapore 049246, Singapore (applicant), represented by Cleveland, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 22/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 453 358 is upheld for all the contested goods.

2. Community trade mark application No 13 146 121 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 of Community trade mark application No 13 146 121. The opposition is based on Community trade mark registration No 9 581 059 and the Irish and United Kingdom non-registered trade marks ‘INTOUCH’. The opponent invoked Article 8(1)(b) CTMR in relation to the Community trade mark registration and Article 8(4) CTMR in relation to the non-registered trade marks.

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

Class 9: Computers and computer apparatus and instruments, none being for use in industrial automation process control and monitoring; disks, disk drives, tapes, tape drives, all for use with computers; electronic communications apparatus and instruments; modems, cables and cable connectors; monitors; mice; scanners; printers; projectors; parts and fittings for all the aforesaid goods.

Class 35: Retail and wholesale services connected with the sale of computer hardware, computer software, computer peripherals and computer, information technology and office related accessories and supplies; online retail and wholesale services connected with the sale of computer hardware, computer software, computer peripherals and computer, information technology and office related accessories and supplies; compilation, provision and dissemination of trade and business information; processing of orders; none of the aforesaid for use in industrial automation process control and monitoring; advisory, consultancy and information services relating to all the aforesaid.

The contested goods are the following:

Class 9: Computer software, application software and computer software platforms, none being for order processing, or for checking price or stock availability; interactive computer software, application software and computer software platforms for researching, exploring and analysing business data, business performance, marketing, business to customer interaction and customer response; business intelligence software; electronic and non-printed publications, reports, instructional guides and training materials focusing on business analytics and customer analytics.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the earlier right’s retail services connected with the sale of computer software; none of the aforesaid for use in industrial automation process control and monitoring in Class 35 (which because of the specification covers all forms of computer software except for use in industrial automation process control and monitoring) is similar to a low degree to the contested computer software, application software and computer software platforms, none being for order processing, or for checking price or stock availability; interactive computer software, application software and computer software platforms for researching, exploring and analysing business data, business performance, marketing, business to customer interaction and customer response; business intelligence software in Class 9. It is should be noted that even though the earlier services are not for use in industrial automation process control and monitoring and whilst the applicant has broad categories such as computer software, application software and computer software platforms, none being for order processing, or for checking price or stock availability, it is impossible for the Opposition Division to filter one from the other.

The contested electronic and non-printed publications, reports, instructional guides and training materials focusing on business analytics and customer analytics are non-physical digital content regarding specific business matters, namely business and customer analytics. The providers of such electronic/digital content are likely to include business or marketing consultants (amongst others) who provide this content to customers wishing to be informed about such business issues. The providers of the opponent’s Class 35 services of compilation, provision and dissemination of trade and business information; none of the aforesaid for use in industrial automation process control and monitoring are also likely to be business or marketing consultants who create such content and who will also be targeting the same customers. Therefore, these goods and services are also considered to be similar to a low degree.

2. The signs

INTOUCH
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letters ‘N-T-O-U-C-H’ which appear in both signs. There is also a degree of similarity between the letter ‘I’ of the earlier mark and the exclamation point of the contested sign as this character can be viewed as an inverted lower case ‘i’. However, they differ in the contested sign’s use of colour, the space between the ‘n’ and ‘T’ and the two arcs which appear above the letter ‘h’.

Aurally, if the contested sign’s exclamation point is perceived as being an inverted lower case ‘i’ then the pronunciation of the signs will be identical. If the contested sign’s exclamation point is not perceived as being an inverted lower case ‘i’ then the pronunciation of the signs will coincide in the sound of the letters ‘N-T-O-U-C-H’ which appear in both signs, and will differ in the sound of the letter ‘I’ of the earlier mark which has no counterpart in the contested sign.

Conceptually, the public in the relevant territory will perceive the earlier mark as a whole as having one of the following meanings near enough to touch or be touched; within reach (of); accessible; to keep up communication; that part of the ground outside the bounding lines of the field of play (touch-lines and goal-lines). Likewise, if the contested sign’s exclamation point is perceived as being an inverted lower case ‘i’ then the same meanings will be understood in the contested sign. If not then only the word ‘TOUCH’ will have a meaning, namely the action or an act of touching (with the hand, finger, or other part of the body); exercise of the faculty of feeling upon a material object. All definitions taken from the Oxford English Dictionary, oed.com. The figurative element of two arcs could be perceived as a reception signal for wireless communications (even though it is only two arcs instead of the usual three).

Consequently, the signs are conceptually similar as they either coincide in the words ‘TOUCH’ or ‘IN TOUCH’ but will differ in the reception signal present in the earlier mark only.

Taking into account the abovementioned visual, aural and 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 elements which could be considered clearly more distinctive than other elements.

The figurative element of two arcs present in the contested sign could be perceived as a reception signal for wireless communications. Bearing in mind that the relevant contested goods are software or electronic/digital content it is considered that this element is weaker than normal for all the contested goods. The public understands the meaning of the element and will not pay as much attention to this weaker than normal element as to the other more distinctive elements of the mark. Consequently, the impact of this weaker than normal element is limited when assessing the likelihood of confusion between the marks at issue.

The signs under comparison have no elements which could be considered clearly more dominant 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 found to be similar to a low degree are directed in part at the public at large (for example the computer software, none being for order processing, or for checking price or stock availability could be used by anyone) and in part at business professionals (for example the application software and computer software platforms for researching, exploring and analysing business data, business performance, marketing, business to customer interaction and customer response are mostly likely aimed at business owners or managers). The level of attention will range from average to higher than average.

6. Global assessment, other arguments and conclusion

The contested goods have been found to be similar to a low degree.

The point of contact between the signs is the similarities caused by both signs having representations of the letters ‘N TOUCH’, and if the contested sign’s exclamation point is perceived as being an inverted lower case ‘i’ then the signs are seen to share their entire verbal element, namely ‘IN TOUCH’. The earlier mark is a word mark, which means it does not claim any particular figurative element or appearance and differences in the use of lower or upper case letters are immaterial. The contested sign is a figurative sign where the letters appear in a standard text, albeit utilising two colours, blue and red, and two arcs which appear above the letter ‘h’.

The shared letters give the signs visual, aural and conceptual similarity. However, for the part of the public which perceives the contested sign’s exclamation point as being an inverted lower case ‘i’ then the signs are not only visually and conceptually similar but also aurally identical.

Regarding the use of colour and the figurative elements of the contested sign, the Opposition Division finds that for signs consisting of both word and figurative components, the word component usually has a stronger impact on consumers than the figurative components. This is because the public will more readily refer to a sign by its verbal component than by describing its figurative or stylistic elements. Certainly in the present case the figurative elements in the contested sign are not likely to have a huge impact on the end users as they will more readily refer to the sign by its verbal component rather than attempt to describe the colouring of the letters or the presence of two arcs appearing above one letter. Additionally, the arcs are weaker than normal as detailed in section c) above.

Therefore, considering that for a part of the public, namely that part which perceives the contested sign’s exclamation point as being an inverted lower case ‘i’, the signs are not only visually and conceptually similar but also aurally identical, the Opposition Division finds that there is a likelihood of confusion even bearing in mind that the goods are only similar to a low degree and that the level of attention will be higher than average for a part of the goods.

As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration. It follows that the contested trade mark must be rejected in its entirety.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) CTMR.

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

Vita VORONECKAITĖ

Ric WASLEY

Richard BIANCHI

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.