OPPOSITION No B 2 445 008

MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235, Düsseldorf, Germany (opponent), represented by Eileen Hudson, Metro-Str. 1, 40235, Düsseldorf, Germany (employee representative)

a g a i n s t

Sigma Estimates A/S, Industrivej 44, 4000 Roskilde, Denmark (applicant), represented by Nemadvokat, Gammel Vartovvej 2, 2900 Hellerup, Denmark (professional representative).

On 20/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 445 008 is upheld for all the contested goods.

2. Community trade mark application No 13 324 405 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 324 405. The opposition is based on, inter alia, international trade mark registration No 1 121 950 designating Benelux, Bulgaria, Denmark, Greece, Spain, France, Italy, Croatia, Hungary, Austria, Poland, Portugal, Romania, Slovakia and the United Kingdom. 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.

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 international trade mark registration No 1 121 950 designating Denmark, the United Kingdom, Greece, Austria, Bulgaria, Benelux, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania and Slovakia.

1. The goods

The goods 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; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; CD/DVD paper sleeve, CD/DVD cases, CD wallet, keyboards, desktop sets, mouse pad, mice, webcams/USB hubs, network cables, USB controller, USB express card, USB sticks, external hard disks, memory cards, CD/DVD, USB flash drive, card reader, webcam, speakers, microphone, stereo headset, stereo speakers, subwoofer, moving sign, led signs, calculators, forgery detectors, cash registers, money detector, digital photo frames, electronic safe, revolving data bank; computer bags.

The contested goods are the following:

Class 9: Computer software in the area of project calculation, execution and analysis.

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 contested computer software in the area of project calculation, execution and analysis is similar to the opponent’s data processing equipment and computers. The latter, indeed, are designed to work by means of computer software, and both are IT-related goods. Moreover, data processing equipment and computer hardware companies also manufacture software. The goods also have the same end users, distribution channels and sales outlets.

2. The signs

	SIGMA ESTIMATES
Earlier trade mark	Contested sign

The relevant territories are Benelux, Bulgaria, Denmark, Greece, Spain, France, Italy, Croatia, Hungary, Austria, Poland, Portugal, Romania, Slovakia and the United Kingdom.

For reasons of procedural economy, the Opposition Division will focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier sign consists of the word ‘SIGMA’, written in stylised red upper case letters. The contested mark is a word mark.

Visually, the signs are similar to the extent that they coincide in the word ‘SIGMA’. However, they differ in the colour of the earlier mark and in the word ‘ESTIMATES’ of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SIGMA’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘ESTIMATES’ of the contested mark, which has no counterpart in the earlier sign.

Conceptually, the public in the relevant territory will perceive the word ‘ESTIMATES’ of the contested sign as meaning the plural of ‘an approximate calculation; a statement indicating the likely charge for or cost of certain work; a judgment; appraisal; opinion’ (extracted from Online Collins English Dictionary used on 10/10/2015 at http://www.collinsdictionary.com/dictionary/english/estimate). At least a part of the relevant public will also probably understand the term ‘SIGMA’ contained in both signs, as ‘The eighteenth letter of the Greek alphabet (Σ, σ), transliterated as “s”’; ‘The eighteenth star in a constellation’ (extracted from Online Oxford Dictionaries used on 10/10/2015 at http://www.oxforddictionaries.com/definition/english/sigma). Therefore, the signs are conceptually similar to the extent that, at least part of the relevant public, would apply the abovementioned meanings to the word ‘SIGMA’. For the rest of the public, the earlier mark has no meaning and the contested sign results in the juxtaposition of a fanciful word and the meaningful term ‘ESTIMATES’.

Taking into account the abovementioned visual, aural and, for a part of the public, conceptual coincidences, it is considered that 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 that could be considered more distinctive or more dominant (visually eye‑catching) than other elements.

The term ‘ESTIMATES’ contained in the contested mark will be perceived as referring to the function performed by the relevant goods in Class 9, that is, computer software in the area of project calculation, execution and analysis. Therefore, the relevant public understands the meaning of that element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign has no elements that 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 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 goods 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 target the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high.

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.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

The goods in question are similar and target the public at large and business customers with specific professional knowledge or expertise, who have an average and high degree of attention, respectively. The earlier mark has an average degree of distinctiveness.

The signs are visually, aurally and, for part of the relevant public, conceptually similar to the extent that they coincide in the word ‘SIGMA’. They differ in the stylisation and colour of the earlier mark, as well as in the element ‘ESTIMATES’ of the contested sign.

However, the word ‘ESTIMATES’ will play a minor role in the overall assessment of similarity between the sign at issue, since the public will pay less attention to it and will focus instead on the more distinctive element, ‘SIGMA’, of the contested sign, which fully coincides with the verbal element of the earlier mark.

Even if average consumers are capable of detecting certain visual and aural differences between the two conflicting signs, the likelihood that they might confuse the signs is very real. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, that is, a variation of the earlier mark configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the target public may regard the goods designated by the trade mark applied for as coming from the same undertaking as the goods covered by the earlier mark.

In light of the foregoing, and taking into account the fact that consumers tend to remember similarities rather than dissimilarities between signs and that average consumers rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their minds, it is considered that the visual and aural dissimilarities between the signs are not sufficient to counteract the visual and aural similarities between them. Therefore, the Opposition Division finds that there is a likelihood of confusion for the relevant public.

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.

The opposition is therefore well founded on the basis of the opponent’s international trade mark registration No 1 121 950.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent, namely German trade mark No 302 011 056 594 (see judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).

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) and (7)(d)(ii) CTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Jessica LEWIS

Juan A. MORALES PAREDES

Ana MUÑIZ RODRIGUEZ

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.