OPPOSITION No B 2 548 868

Robojob, besloten vennootschap met beperkte aansprakelijkheid, Industriepark 12 Zone B, 2220 Heist-op-den-Berg, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Kram/Weisshaar AB, Katarina Bangata 52, 11639 Stockholm, Sweden (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 548 868 is partially upheld, namely for the following contested goods:

Class 9: Computer software (recorded or downloadable), in particular application software (apps); apps (computer software) for mobile terminals; interfaces for computers.

2. European Union trade mark application No 13 773 007 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 773 007. The opposition is based on, inter alia, Benelux trade mark registration No 968 409. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards earlier international trade mark registration designating the European Union No 1 243 073 , on which, inter alia, the opposition is based.

On 23/07/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and finally expired on 28/01/2016.

The opponent did not submit any evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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.

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 Benelux trade mark registration No 968 409.

1. The goods and services

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

Class 7: Machine tools; robots [machines], including robots for industry and manipulation, control and operating robots; mechanical control devices for robots.

Class 9: Electronic control devices for robots; control equipment for robots; digital operating for robots; electronic control systems for robots and systems; sensor control for robots and control; electronic sensors for robots; equipment for remote control for robots; control electronics for robots; computers and application and system control software for controlling the said goods in class 7.

Class 42: Engineering; design and development of the goods in classes 7 and 9; technical research; advice and information with respect to automation; information regarding automation of production processes; programming of computing routines for electronic data processing equipment; computer programming, development and engineering, as well as consultancy for industrial automation; computer system analysis; services of engineers; design, development, writing, connecting, adapting, updating, testing, installing and maintenance of software, in particular operating software for the goods in class 7; design and development of robots and robotic systems; technical and scientific research on theoretic implications and practical applications of robots.

The contested goods and services are the following:

Class 9: Computer software (recorded or downloadable), in particular application software (apps); Apps (computer software) for mobile terminals; Interfaces for computers.

Class 35: Organisation and conducting of exhibitions and trade fairs for commercial or advertising purposes; arranging and conducting of exhibitions and trade fairs relating to the integration of information technology and networking in ordering, manufacturing, distribution and sales processes, in particular in the field of customised mass production (mass customisation), computerised prototype production (rapid prototyping), computerised tool construction (rapid tooling) and computerised manufacture of components and lines (rapid manufacturing); arranging and conducting of exhibitions and trade fairs for the interactive presentation of the integration of information technology and networking in ordering, manufacturing, distribution and sales processes, in particular in the field of customised mass production (mass customisation), computerised prototype production (rapid prototyping), computerised tool construction (rapid tooling) and computerised manufacture of components and lines (rapid manufacturing); arranging of commercial and business contacts for creating and promoting business networks; all the aforesaid services being for commercial or advertising purposes.

Class 41: Organisation of exhibitions and trade fairs; cultural activities; arranging and conducting of trade fairs, exhibitions and presentations relating to the integration of information technology and networking in ordering, manufacturing, distribution and sales processes, in particular in the field of customised mass production (mass customisation), computerised prototype production (rapid prototyping), computerised tool construction (rapid tooling) and computerised manufacture of components and lines (rapid manufacturing); none of the aforesaid services being for commercial or advertising purposes.

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 terms ‘in particular’ and ‘including’, used in the applicant’s and the opponent’s lists of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The contested computer software (recorded or downloadable), in particular application software (apps); apps (computer software) for mobile terminals are identical to the opponent’s application and system control software for controlling the said goods in class 7, because the opponent’s goods are included in, or overlap with, the contested goods.

Interfaces for computers are systems that are used for operating a computer, that is, systems that control the way information is shown to the computer’s user and the way the user is able to work with the computer. In a computer system, for example, an interface is a shared boundary across which two separate components of the system may exchange information. The contested interfaces for computers are likely to consist of, or at least include, software elements. Therefore, there is a high degree of similarity between the contested goods and the opponent’s application and system control software for controlling the said goods in class 7. In principle, a programmer or a software company that produces the contested interfaces for computers may also provide the opponent’s software products, regardless of the fact that the software is intended to control specific machine tools, robots, etc. These goods have strong similarities in their natures, purposes and methods of use. Furthermore, they can be complementary. It follows that these goods are similar to a high degree.

Contested services in Classes 35 and 41

The contested services in Class 35 are rendered to third parties to assist them in the promotion of their goods and services. The contested services in Class 41 relate to the organisation of fairs and trade exhibitions as well as cultural activities in relation to a variety of issues. The abovementioned services have a fundamentally different purpose from the opponent’s goods in Classes 7 and 9, which are essentially machine tools and electronic and computing-related goods, and from the opponent’s services in Class 42, which are basically services related to engineering and computer programming. The goods and services in question normally have different natures and purposes, they are not offered through the same distribution channels and they have different commercial origins. Furthermore, they are neither in competition nor complementary, since there is no connection between them, in the sense that one could be indispensable or important for the provision of the other such that consumers might think that the responsibility for the provision of those goods and services lay with the same undertaking. For these reasons, the contested services are considered dissimilar to all of the opponent’s goods and services.

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 goods found to be identical or similar are directed at the public at large and specialists with specific professional knowledge or expertise in IT. Given the specialised nature of the goods in question, the degree of attention is deemed to vary from average to higher than average.

3. The signs

ROBOJOB	ROBOCHOP
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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).

For reasons of procedural economy, the Opposition Division deems it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a word mark, ‘ROBOJOB’.

The contested sign is a word mark, ‘ROBOCHOP’.

It should be noted that, although each mark is composed of a single word element, it is likely that a significant part of the relevant French-speaking public will perceive the prefix ‘ROBO’ at the beginning of both marks and understand it as ‘robot’.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In this context, it should be noted that, although the component ‘JOB’, which appears at the end of the earlier mark, is not a French word, it is used in common parlance in French with the same meaning as in English. The element ‘ROBO’ will be associated with ‘robotic’ or ‘automatic’, because the corresponding word in French is very similar (robot). Although ‘ROBO’ is a misspelling of the word ‘robot’, it will be understood as having the same meaning when consumers hear the mark pronounced.

It follows that, upon reading or hearing the earlier mark, ‘ROBOJOB’, the relevant French-speaking consumer will associate it with the idea of ‘a job done by a robot’.

The relevant goods are applications and system control software, which are all products programmed with automatic functions. Moreover, since the software may be intended for robots, which use software to work or perform their normal functions, the component ‘ROBO’ may be understood as indicating the intended purpose of the aforementioned goods. Therefore, the impact of this element must be considered limited when assessing the likelihood of confusion between the marks at issue.

Bearing in mind that the relevant contested goods relate to devices programmed with automatic functions, the same considerations as above apply to the component ‘ROBO’ of the contested mark: it is weak in relation to the contested goods in Class 9.

On the other hand, the component ‘CHOP’ in the contested mark has no meaning whatsoever in French.

The remaining part of the relevant public, which will not single out the element ‘ROBO’ in the signs, will perceive the marks as fanciful words.

Neither mark has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs have the same structure, as they are both word marks made up of one single word, of almost the same number of letters (seven versus eight). In particular, they have in common the component ‘ROBO’, placed at the beginning of both marks, and the third vowel ‘O’. However, they differ in the elements ‘J*B’ in the earlier mark and ‘CH*P’ in the contested sign.

The first parts of the conflicting marks are identical. Consumers 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.

Therefore, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘RO-BO’ at the beginning of the marks. Furthermore, the signs have similar last syllables, since ‘JOB’ and ‘CHOP’ are pronounced similarly and do not make markedly different impressions from the aural point of view.

Therefore, the signs are aurally similar to a high degree.

Conceptually, when pronounced, the element ‘ROBO’, which appears at the beginning of each mark, will be perceived independently and separated from the rest of the sign by at least part of the relevant public.

This will immediately bring to the minds of French consumers the meaning ‘robot’, due to the identical pronunciation of ‘ROBO’ and ‘robot’ in French.

The earlier mark includes at its end the element ‘JOB’, which is understood in French with the same meaning as in English. When the earlier mark is pronounced, it will bring to the mind of the relevant consumer the concept of ‘a job done by a robot’.

In the contested mark, the element ‘ROBO’, which appears at the beginning of the mark, will be perceived independently and separated from the rest of the sign, as explained above, by at least part of the relevant public. On the other hand, the component ‘CHOP’ has no meaning whatsoever in French.

For the part of the relevant public that perceives the component ‘ROBO’ in both marks and associates it with the concept of ‘robot, automatic’ or ‘automated functionalities’, the conflicting signs are conceptually similar to an average degree. This finding cannot be altered by the presence of the meaningful suffix ‘JOB’ in the earlier mark, which serves only to qualify ‘ROBO’.

However, for those consumers in the relevant territory who perceive the signs as fanciful words and do not recognise the component ‘ROBO’ as meaning ‘robot’, or perceive and understand the component ‘JOB’ in the earlier mark, neither mark has any meaning in that territory. Since in this case a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, 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 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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly highly similar and partly dissimilar.

The signs are similar to the extent that they have the element ‘ROBO’ in common, and they differ in the elements ‘JOB’/‘CHOP’. In addition, the differing elements are positioned at the ends of the marks, so they are unlikely to catch the attention of consumers either from a visual or, in particular, from an aural point of view, given their very similar pronunciations. Furthermore, conceptually the signs are also similar, at least for the part of the relevant public that perceives the component ‘ROBO’ in the marks.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

In light of all the foregoing, taking into account the relevant factors and their interdependence, especially the fact that the signs engender an impression of overall similarity from the visual, aural and, where relevant, conceptual points of view, and despite the higher than average degree of attention of part of the public, it is considered that both the general public and professional consumers will be misled into thinking that the goods found to be identical or similar to a high degree bearing the contested mark or the earlier mark originate from the same undertaking or, as the case may be, from undertakings that are economically linked. This finding is not altered by the presence of a weak element at the beginning of each sign, since the differences in the marks are deemed to be insufficient to counteract their similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux registration No 968 409.

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

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

The opponent has also based its opposition on Benelux trade mark registration No 961 452 for the figurative mark , registered for the following goods and services:

Class 7: Machine tools; robots [machines], including robots for industry and manipulation, control and operating robots; mechanical control devices for robots.

Class 9: Electronic control devices for robots; control equipment for robots; digital operating for robots; electronic control systems for robots and systems; sensor control for robots and control; electronic sensors for robots; equipment for remote control for robots; control electronics for robots; computers and application and system control software for controlling the said goods in class 7.

Class 42: Engineering; design and development of the goods in classes 7 and 9; technical research; advice and information with respect to automation; information regarding automation of production processes; programming of computing routines for electronic data processing equipment; computer programming, development and engineering, as well as consultancy for industrial automation; computer system analysis; services of engineers; design, development, writing, connecting, adapting, updating, testing, installing and maintenance of software, in particular operating software for the goods in class 7; design and development of robots and robotic systems; technical and scientific research on theoretic implications and practical applications of robots.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements such as the depiction of the words ‘ROBO JOB’ in a slightly stylised typeface and dashed lines in two colours, which are not present in the contested trade mark. Moreover, this earlier mark covers the same scope of goods and services as the earlier mark compared above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are obviously not identical.

COSTS

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

The Opposition Division

Isabel DE ALFONSETI HARTMANN

Claudia ATTINAÀ

Ana MUÑIZ RODRÍGUEZ

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.