CANCELLATION No 39 301 C (INVALIDITY)

Smilics Technologies, S.L., Lepanto, 43, 08223 Terrassa (Barcelona), Spain (applicant), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Gestió I Promoció de Serveis Professionals Filebee S.L., Es Rafal, 1., 07260 Porreres, Spain (EUTM proprietor).

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

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 13 774 121 is declared invalid for some of the contested goods and services, namely:

Class 9: Software; computer graphics software; interactive computer software; interfaces for computers; communication software; computer software packages; desktop publishing software; software drivers; software programmable microprocessors; computer telephony software; computer programs [downloadable software]; computer software platforms; computer programs for network management; antennas and aerials as communications apparatus; telecommunications apparatus; programmable telecommunication apparatus.

Class 38: Information about telecommunication; telecommunication services; telecommunications by e-mail.

Class 42: Rental of computer software; computer hardware and software consultancy; repair of computer software; maintenance of computer software; software engineering; updating of computer software; computer software design; configuration of computer software; developing computer software; computer software research; software creation; installation of computer software; computer software consultancy; writing of computer programs; updating of computer programs; installation and maintenance of computer programs; software development services; software design and development; design and development of wireless computer networks.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 35: Advertising; advertising and marketing; advertising business especially in the field of telematic and telephone networks; distribution of advertisements and commercial announcements.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 774 121 for the figurative mark . The application is based on European Union trade mark registration No 10 985 075 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the goods and services and the trade marks were similar.

The EUTM proprietor did not submit any observations despite having been invited to do so.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 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 goods and services on which the application is based are the following:

Class 9: Measuring, signaling and checking apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; sensors; apparatus for recording, transmission or reproduction of sound or images; data-processing apparatus; magnetic recording media; computer programs; data-processing equipment and computers.

Class 38: Telecommunications services; communications via computer terminals.

Class 42: Technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Software; computer graphics software; interactive computer software; interfaces for computers; communication software; computer software packages; desktop publishing software; software drivers; software programmable microprocessors; computer telephony software; computer programs [downloadable software]; computer software platforms; computer programs for network management; antennas and aerials as communications apparatus; telecommunications apparatus; programmable telecommunication apparatus.

Class 35: Advertising; advertising and marketing; advertising business especially in the field of telematic and telephone networks; distribution of advertisements and commercial announcements.

Class 38: Information about telecommunication; telecommunication services; telecommunications by e-mail.

Class 42: Rental of computer software; computer hardware and software consultancy; repair of computer software; maintenance of computer software; software engineering; updating of computer software; computer software design; configuration of computer software; developing computer software; computer software research; software creation; installation of computer software; computer software consultancy; writing of computer programs; updating of computer programs; installation and maintenance of computer programs; software development services; software design and development; design and development of wireless computer networks.

Contested goods in Class 9

The contested software; computer graphics software; interactive computer software; communication software; computer software packages; desktop publishing software; software drivers; software programmable microprocessors; computer telephony software; computer programs [downloadable software]; computer software platforms; computer programs for network management include software in general (programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation) and more specific software. Computer programs are also referred to as software. Therefore, the contested goods are identical to the applicant’s computer programs, either because the applicant’s goods include, are included in, or overlap with the contested goods.

The contested interfaces for computers may refer to software or hardware. When referring to software, an interface is a program that allows a user to interact with computers in person or over a network. An interface may also refer to controls used in a program that allow the user to interact with the program. Therefore, the contested interfaces for computers are included in, or overlap with the applicant’s computer programs and, consequently, are identical.

The contested antennas and aerials as communications apparatus; telecommunications apparatus; programmable telecommunication apparatus are similar to the applicant’s telecommunication services to the extent that they are complementary, and, even though their nature is different, their purposes and distribution channels are the same.

Contested services in Class 35

The contested advertising and marketing services are services which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services and marketing services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as magnetic recording media or computer programs in Class 9. These good and services are dissimilar.

In light of the foregoing, the contested services in Class 35 are dissimilar to the applicant’s goods and services in Classes 9, 38 and 42. These goods and services do not have the same natures, purposes, methods of use, manufacturers/providers, or distribution channels and they are neither complementary nor in competition.

Contested services in Class 38

Telecommunication services are identically contained in both lists of services.

The contested information about telecommunication; telecommunications by e-mail are included in the broad category of the applicant’s telecommunications services. Therefore, they are identical.

Contested services in Class 42

The contested software design and development; computer software design; developing computer software; software development services are identical to the applicant’s design and development of computer hardware and software since they are synonyms.

The contested software engineering; computer software research are included in the applicant’s broad category technological services and research and design relating thereto. Therefore, they are identical.

The contested software creation; writing of computer programs; design and development of wireless computer networks are included in, or overlap with the applicant’s design and development of computer hardware and software. Therefore, they are identical.

The contested repair of computer software; installation of computer software; maintenance of computer software; updating of computer software; configuration of computer software; updating of computer programs; installation and maintenance of computer programs are at least similar to an average degree to the applicant’s design and development of computer hardware and software. These services have the same nature, they are rendered by the same companies through the same distribution channels, and they target the same public. Furthermore, some of them are complementary such as installation of computer programs and development of software.

The contested rental of computer software is similar to the applicant’s design and development of computer hardware and software. These services target the same public, are provided through the same distribution channels and are generally rendered by the same kind of undertakings (employing professionals in the IT field), which normally provide a full spectrum of IT solutions tailored to the needs of their customers.

The contested computer hardware and software consultancy; computer software consultancy are similar to the applicant’s design and development of computer hardware and software. These services have the same purpose, they target the same public and they are complementary.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the IT field.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, their price or terms and conditions.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark comprised of the letters ‘Wi’ in grey, followed by a yellow figurative element (the symbol used on a power switch, depicted vertically towards the left) and the letters ‘beee’ in bold, black, slightly stylised, lower-case letters. Above the last letter ‘e’, there is a yellow figurative element consisting of three curved lines that will be associated with wireless internet networks (Wi-Fi) and radio waves.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Although as a whole, the verbal element ‘Wi beee’ of the earlier mark has no meaning, the element ‘Wi’ will be perceived as the abbreviated form of wireless and this concept is reinforced by the figurative element depicting the Wi-Fi symbol (Wireless Fidelity symbol used to indicate that there is a wireless internet connection). Bearing in mind that the relevant goods and services are all related to IT, these elements are non-distinctive or weak. The element ‘beee’ is meaningless and therefore distinctive to an average degree. Although the power switch symbol has no direct meaning in relation to the relevant goods and services, it is commonly used in relation to all kinds of IT apparatus, and its distinctiveness is therefore rather limited.

The contested mark is also a figurative mark. It is comprised of a large letter ‘W’ depicted in colours (orange, green, blue and purple), with the word ‘WIBEE’ depicted in grey upper-case letters, placed underneath. At the bottom of the mark, the verbal element ‘SOCIAL WIFI’ is depicted in smaller grey letters and separated from the previous verbal element by a thin line.

Due to its size and placement at the beginning of the mark, the letter ‘W’ is the dominant element of the contested mark as it is the most eye-catching. The letter ‘W’, which will be perceived as the initial letter of the word ‘WIBEE’ placed below, is distinctive to an average degree since it has no meaning in relation to the relevant goods and services.

The word ‘WIBEE’ will be perceived as an indivisible unit, meaningless, and thus distinctive to an average degree. However, the verbal element ‘SOCIAL WIFI’, which refers to a system allowing customers to connect to a public WiFi network using a social media account, are non-distinctive or weak in relation to the relevant goods and services, which are all linked to the IT field.

Visually, the verbal element ‘Wi beee’ of the earlier mark and the verbal element ‘WIBEE’ of the contested mark coincide in the letters ‘W-I-B-E-E’ and differ only in their stylisation and in the additional final letter ‘e’ of the earlier mark. The marks also differ in the dominant letter ‘W’ and the non-descriptive or weak element ‘SOCIAL WIFI’ of the contested mark, as well as in their figurative elements, as described above. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore the signs are visually similar to a low degree.

Aurally, the earlier mark ‘Wi beee’ and the verbal element ‘WIBEE’ of the contested mark are aurally identical, or almost identical, according to the pronunciation rules of the relevant languages. Since the stylised letter ‘W’ of the contested mark will be perceived as the first letter of the verbal element ‘WIBEE’ placed below, it will not be referred to aurally. Furthermore, since the verbal element ‘SOCIAL WIFI’ of the contested mark is neither distinctive nor dominant, it is likely that the relevant public will refer to the mark aurally as just ‘WIBEE’ (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34). Therefore, the marks are aurally identical or almost identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark conveys the concept of wireless internet networks and it also reproduces a power switch symbol which has a limited distinctiveness. The contested mark also conveys the concept of ‘Wi-Fi’ (wireless internet network), albeit social. As a whole, the elements ‘Wi beee’ and ‘WIBEE’ have no meaning. Given that the coinciding concept is weak or non-distinctive in relation to the relevant goods and services, the marks are conceptually similar to a low degree.

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

Consequently, 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 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 non‑distinctive or weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are party identical and partly similar. The degree of attention of the public varies from average to high.

The distinctiveness of the earlier mark is average.

The signs are visually and conceptually similar to a low degree and aurally, they are identical or almost identical.

In relation to the goods and services at issue, the phonetic aspect is particularly relevant. Not only may the importance of certain visual dissimilarities be diminished by the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks at issue, and must rely on his imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), but the consumer may also be prompted to choose the goods and services in response to a television advertisement, for example, or because they are otherwise aurally recommended or spoken about.

Therefore, it is considered that the visual differences between the marks are insufficient to counteract the similarities and in particular the aural identity or quasi identity between them.

Considering all the above, there is a likelihood of confusion on the part of the public even when it displays a higher than average degree of attention.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 10 985 075. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation 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 Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Pierluigi M. VILLANI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.