OPPOSITION No B 2 436 940

Gobernalia Global Net, S.A., Plaza Santa Bárbara, 2, 28004 Madrid, Spain (opponent), represented by Baker & McKenzie, Paseo de la Castellana, 92, 28046 Madrid, Spain (professional representative).

a g a i n s t

Bsolus - Business Solutions, Rua Carlos Magalhães nº 4, 4700 001 Braga, Portugal (applicant).

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

DECISION:

1. Opposition No B 2 436 940 is partially upheld, namely for the following contested goods:

Class 9: Information technology equipment.

2. Community trade mark application No 13 232 509 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 232 509. The opposition is based on Spanish trade mark No 3 055 394. The opponent invoked Article 8(1)(b) CTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 35: Business management, business administration, office functions; in particular outsourcing services (business assistance) in relation to technology and information services; data processing services; consultancy and advisory services in relation to data processing.

Class 42: Application service provider services, in particular, hosting computer software application of others; development of computer software application solutions for mobile phones; design, creation, hosting and maintenance of internet sites for third parties; website design services, design of computer databases, computerised file design; design, development and implementation of software; data security services; data storage services; consultancy and advisory services in relation to data storage.

The contested goods, after the limitation, are the following:

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; recorded content; navigation, guidance, tracking, targeting and map making devices; safety, security, protection and signalling devices; devices for treatment using electricity; optical devices, enhancers and correctors; diving equipment; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers.

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

The term ‘in particular’ opponent’s list of services, indicates that the specific 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’).

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

The contested information technology equipment is similar to the opponent’s design, development and implementation of software. They are complementary products and services. Furthermore, they have the same distribution channels, relevant public and producers/providers.

The contested scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; recorded content; navigation, guidance, tracking, targeting and map making devices; safety, security, protection and signalling devices; devices for treatment using electricity; optical devices, enhancers and correctors; diving equipment; audiovisual equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers are different to the opponent’s services in classes 35 and 42. They differ in their natures, consumers, purposes and producers/providers. Furthermore, are not in competition. Their distribution channels do not coincide and they are not complementary. Consequently, the contested goods are dissimilar to the opponent´s services in classes 35 and 42.

2. The signs

	Beevo
Earlier trade mark	Contested sign

The relevant territory is Spain.

Visually, the contested sign consists of the verbal element ‘Beevo’. The earlier mark consists of the word ‘BEEVA’ and the design of three figurative geometrical elements. The signs are similar to the extent that they coincide in the letters ‘BEEV-’. However, they differ in their last letters, ‘A’ in the earlier mark and ‘O’ in the contested sign. Furthermore, they also differ in the graphic and figurative elements including the colours of the earlier trade mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BEEV-’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of their last letters, ‘A’ in the earlier mark and ‘O’ in the contested sign.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

3. Distinctive and dominant elements of the signs

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

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

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Relevant public – degree of attention

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

In the present case, the contested goods and the opponent’s services found to be similar are directed at the public at large as well at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high in function of the characteristics and price of the goods and services at issue.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.).

According to the same line of case-law, 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 (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 23).

The goods and services under comparison are partially similar and partially different and the signs are visually and aurally similar with no concepts that could help differentiate them.

The earlier trade mark is a figurative sign. Consumers usually focus on the verbal element of a sign as they will more easily refer to a sign by its verbal element than by describing the figurative elements. Therefore, in the present case, the letters ‘BEEVA’ of the earlier trade mark will have a stronger impact on consumers than their specific figurative elements.

The conflicting marks coincide in their first four letters “BEEV”. The relevant public 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Account must also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind.

Taking into account the above, and especially the fact that the contested goods and the opponent’s services are partially similar, it is considered that the relevant public, including consumers with professional knowledge or expertise, might be led to believe that the relevant goods and services come from the same undertaking or economically linked undertakings, even taking into account a higher level of attention.

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 partially well founded on the basis of the opponent’s Spanish trade mark registration.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

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.