OPPOSITION No B 2 552 035

Schibsted Classified Media Spain, S.L., Parque de Oficinas Sant Cugat Nord, Pl. Xavier Cugat, S/N, 08174 Sant Cugat del Vallés, Spain (opponent), represented by J.D. Núñez Patentes y Marcas, S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Software Consulting Markus Bernhardt GmbH, Waldparkstr. 47a, 85521 Riemerling, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte Partnerschaft mbB, Steinsdorfstr. 19, 80538 München, Germany (professional representative).

On 07/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 552 035 is partially upheld, namely for the following contested goods and services:

Class 9: Information technology and audiovisual equipment; software; computers; computer hardware.

Class 35: Wholesaling and retailing, including via the internet, in the fields of electric goods and electronic goods, sound recording carriers and data carriers, software and hardware, 3D printers, parts, spare parts and accessories for the aforesaid goods.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; consultancy in the field of computers; software creation; design of software; developing computer software.

2. European Union trade mark application No 13 782 305 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 782 305, namely against all the goods and services in Classes 9, 35, 41 and 42. The opposition is based on Spanish trade mark registration No 3 529 423. The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods and services

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

Class 35: Advertising, on line advertising on a computer network, dissemination of advertising matter and publicity material, rental of advertising time on communications media of all kinds; business management; business administration; sales promotion for others; information relating to the retailing and sale via global computer networks, including the internet, of goods, distribution of samples; compilation of information from a central computer, transcription of communications, data search in computer files for others, computerised file management; compilation of information into computer databases, arranging newspaper subscriptions, organisation of exhibitions for commercial or advertising purposes; arranging subscriptions to a global telecommunications network (the internet) or to private-access networks (intranets) in the field of classified; arranging subscriptions to data transmission services and to the dissemination of classified advertisements; arranging subscriptions to a centre providing access to a computer telecommunications or data transmission network, dissemination of business information by electronic means, in particular via global communication networks (the internet) or private-access networks (intranets) in the field of dissemination of classified advertisements relating to jobs offers.

Class 38: Telecommunications and communications via global computer networks, namely, providing access to information on communications networks; providing of multi-user access to global computer networks; communication services for transmission of images, voices and general information.

Class 42: Creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market; updating of databases and computer software.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment; software; computers; computer hardware.

Class 35: Wholesaling and retailing, including via the internet, in the fields of electric goods and electronic goods, sound recording carriers and data carriers, software and hardware, 3D printers, parts, spare parts and accessories for the aforesaid goods.

Class 41: Electronic data processing training; provision of tuition; publication of texts, other than publicity texts; providing on-line electronic publications, not downloadable; arranging and conducting of courses, seminars and workshops; publication of printed matter (also in electronic form), except for advertising purposes; provision of training courses.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; consultancy in the field of computers; software creation; design of software; developing computer software.

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 opponent’s lists of goods and services, indicate that the specific services (in Classes 35) 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, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services with a broader category (Class 38), is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 and audiovisual equipment; software; computers; computer hardware are, in principle, physical and electronic parts of computers and audiovisual apparatus and computer programs. The opponent’s creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market; updating of databases and computer software in Class 42 are specific types of computer programming services and services related to the physical components of computers (hardware) or the operating information used by computers (software). The goods and services under comparison are closely linked to each other because manufacturers of computers, audiovisual apparatus and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the end users and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services can have the same distribution channels and are also complementary. Therefore, they are considered to be similar.

Contested services in Class 35

The contested wholesaling and retailing, including via the internet, in the fields of electric goods and electronic goods, sound recording carriers and data carriers, software and hardware, 3D printers, parts, spare parts and accessories for the aforesaid goods does not just refer to the mere act of selling but rather in the activities rendered around the actual sale of the specified goods which may include, among others, provision of information about the selling of such goods (for example information on selling terms and conditions). Therefore, they can have the same providers, end users and distribution channels as the opponent’s information relating to the retailing and sale via global computer networks, including the internet, of goods and, furthermore, they can be complementary to those earlier services. Consequently, they are considered to be similar to the opponent’s services.

Contested services in Class 41

The contested electronic data processing training; provision of tuition; publication of texts, other than publicity texts; providing on-line electronic publications, not downloadable; arranging and conducting of courses, seminars and workshops; publication of printed matter (also in electronic form), except for advertising purposes; provision of training courses are basically educational, training and publishing services (not relating to publicity texts). These services are dissimilar to all the opponent’s services, i.e. advertising and business services in Class 35, telecommunication services in Class 38 and website and software services in Class 42, since they do not originate from the same undertakings, they are distributed through different channels and are directed at different end users. In addition, they are neither complementary nor in competition.

Contested services in Class 42

The contested design and development of computer software; software creation; design of software; developing computer software (i.e. in principle computer programming) include, as broader categories, the opponent’s creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market (which are in fact computer programming services as well). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested design and development of computer hardware can have the same providers, distribution channels and may target the same end user as the opponent’s creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market. This is because the opponent’s services require the same know-how and also rely heavily on hardware services such as the contested services. Therefore, they are considered to be similar.

The contested consultancy in the field of computers can have the same nature, purpose and may target the same end users as the opponent’s creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market. Furthermore, the services are complementary to each other. Therefore, they are considered to be similar.

The contested scientific and technological services and research and design relating thereto are closely connected to the opponent’s creating and maintaining of websites relating to the dissemination of information relating to the classified, job and real estate advertisements market. These services coincide partially in their technological nature. Furthermore, they may have the same providers and target the same end users. Consequently, they are considered to be similar.

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 field of IT. The degree of attention of the relevant public varies from average to high, as some of the goods and services concerned (e.g. scientific and technological services and research and design relating thereto; design and development of computer hardware and software in Class 42) are likely, due to their degree of sophistication and their cost, to be the subject of a more careful purchasing decision.

3. The signs

SCM SPAIN S.L.	SCMB
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

The signs under comparison are word signs written in upper case letters in a standard typeface; the earlier mark consists of the verbal elements ‘SCM SPAIN S.L.’ whereas the contested sign is composed of the verbal element ‘SCMB’.

The element ‘SCM’ of the earlier trade mark will not be associated with any meaning by the public in the relevant territory and, therefore, is found to be normally distinctive in relation to the relevant services. However, the relevant public will perceive the other verbal components of the earlier mark, ‘SPAIN’ and ‘S.L.’, as having a concrete meaning. More specifically, the first will be understood as the English equivalent of the Spanish word ‘España’ and the second will be taken as the abbreviation for the legal form of a limited liability company in Spain, ‘sociedad limitada’. Since ‘SPAIN’ may trigger, in the mind of the relevant public, the idea that the relevant services originate from or are offered in Spain, and ‘S.L.’ merely refers to the legal form of a Spanish company, both of the elements are considered as non-distinctive for all the relevant services.

The element ‘SCMB’ of the contested sign is meaningless in the relevant territory and thus is distinctiveness in relation to the relevant services is normal.

Neither of the signs under comparison has any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs under comparison coincide in the sequence of the letters ‘SCM’, present identically at the beginning of both signs. This in fact means that the only distinctive element of the earlier mark, ‘SCM’, is entirely incorporated in the first three letters of the contested sign, ‘SCM -’. On the other hand, the signs differ in the non-distinctive verbal elements ‘SPAIN’ and ‘S.L.’ of the earlier trade mark and in the single letter ‘B’ of the contested sign placed at the end of the sign.

Furthermore, taking into account that the first three letters of the conflicting signs are identical, it should be recalled that 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.

Consequently, it may be concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their initial letters ‛SCM’. On the other hand, it differs in the sound of the letters ‘SPAIN’ and ‘S.L.’ of the earlier mark, which have no counterparts in the contested sign. However, as mentioned previously the impact of these differences is reduced due to the non-distinctive nature of the terms as well as their secondary positioning. The pronunciation is also different in the sound of the letter ‘B’ present only in the contested sign.

Therefore, the signs are similar to an average degree from an aural point of view.

Conceptually, reference is made to the previous assertions regarding the meanings of the signs and their individual elements.

While the public in the relevant territory will perceive the earlier mark as referring to the name of a Spanish company, the contested sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the conflicting signs are not conceptually similar.

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 relevant 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 elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

As has been concluded above, the contested goods and services in Classes 9, 35, 41 and 42 were found to be identical, similar and dissimilar to the services covered by the earlier trade mark and they target the public at large as well as business customers with a degree of attention varying from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant services.

The signs in dispute are visually and aurally similar to an average degree on account of the coincidence in the sequence of the letters ‘SCM’ constituting identically their beginnings which is, moreover, considered to be the only distinctive element of the earlier mark. From the conceptual point of view, the signs are considered not to be similar.

On the other hand, the differences between the signs lie only in the presence of the non-distinctive elements ‘SPAIN’ and ‘S.L.’ in the earlier mark and in the letter ‘B’ placed at the end of the contested sign.

In this regard, it should be recalled that in word signs the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

In addition, account must 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Taking into account the abovementioned similarities between the signs at issue, emphasising, in particular, the fact that the only distinctive element of the earlier mark constitutes the beginning of the contested sign, the Opposition Division considers that such similarities might lead the relevant public in Spain to think that those of the contested goods and services found to be identical or similar come from the same or economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the relevant territory and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 3 529 423.

It follows from the above that the contested sign must be rejected for the goods and services 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.

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

Alistair BUGEJA

Martin MITURA

Vanessa PAGE

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.