OPPOSITION No B 2 569 807

DrugDev Inc., 1000 Madison Avenue, First Floor, Audubon, Pennsylvania 19403, United States of America (opponent), represented by Beresford Crump LLP, 16 High Holborn, London WC1V 6BX, United Kingdom (professional representative)

a g a i n s t

Major Consulting Oy, PL 24, 41800 Korpilahti, Finland (applicant), represented by Jarmo Juhani Talvitie, Rajamãentie 46, 04340 Tuusula, Finland (professional representative).

On 26/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 569 807 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 900 519, namely against all the services in Class 44 and some of the goods and services in Classes 9, 35, 38, 42 and 45. The opposition is based on United Kingdom trade mark registration No 3 018 754. 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 goods and services on which the opposition is based are the following:

Class 9: Databases; databases containing information on professionals; software for storing, administering and publishing databases on a computer network; software for controlling online access to information stored in a database via a computer network; payment processing software.

Class 35: Professional networking services; compiling, publishing and administering databases containing information on professionals; collecting, compiling, organising and publishing information on professionals; compiling and organising directories for publication on computer networks; collecting, compiling, organizing and publishing information on professionals for recruitment and engagement purposes; collecting, compiling, organizing information on professionals for networking and advertising purposes; business and administration advice and information services; business research.

Class 38: Providing access to digital content, websites and portals.

Class 41: Business administration teaching and training; publishing information on professionals; publishing information on professionals for recruitment and engagement purposes; publishing information on professionals for networking and advertising purposes; publication of websites, databases and directories on computer networks.

Class 42: Hosting, administration and maintenance of websites, databases and directories on computer networks; hosting online facilities; information technology support services; information and advisory services relating to scientific research.

Class 44: Medical information services.

The contested goods and services are the following:

Class 9: Computer programs and databases, in particular relating to welfare in workplaces, educational institutions or other organisations, risks and risk management or analysis, reporting and management of information; Computers, Data processing equipment and accessories (electrical and mechanical); Communications equipment.

Class 35: Analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to business risks and risk management, business activities, running and management of enterprises and organisations; Analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to professional skills, working efficiency and other employee requirements; Analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services for advertising, marketing and promotion; Business administration; Clerical services; Human resources management and recruitment services; Data processing; Collection, systematisation, analysis, reporting and providing of information relating to business and management.

Class 38: Sending, receiving and transmitting data relating to risks and risk management; Sending, receiving and transmitting data relating to welfare in a workplace, educational institution or other organisation; Sending, receiving and transmitting signals, text, sound, images, graphics, videos and messages; Communication services provided electronically; Providing access to electronic communications networks and electronic databases; Interactive broadcasting and communications services; Providing discussion spaces and groups, chat lines and online bulletin boards on the internet and other data networks, in particular in connection with welfare in workplaces, educational institutions or other organisations, risks and risk management, or analysis, reporting and management of information; Information, analysis, consulting, advice and support relating to any of the foregoing.

Class 42: Development, programming, implementation, maintenance and rental of computer software, cloud services and cloud computing, web hosting and software as a service (SaaS), in particular in connection with welfare in workplaces, educational institutions or other organisations, risks and risk management, or analysis, reporting and management of information; Design, development, security, protection and restoration services relating to computers and IT issues; Data copying, conversion and encoding; Analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to any of the foregoing; Scientific and technological information, consulting, research, analysis and advice; Quality control services; Design, implementation, maintenance and rental of analysis and reporting systems, design, implementation and maintenance of communications systems; Designing, managing and monitoring online forums for discussion; Natural science services.

Class 44: Services relating to the personal welfare of people (healthcare); Medical and healthcare analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to welfare in a workplace, educational institution or other organisation; Medical and healthcare analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to people’s frame of mind, level of alertness, performance, and physical and mental strain; Stress management services; Mental health services; Care and rehabilitation in connection with reducing and stopping the use of alcohol, tobacco, narcotics and other intoxicants; Occupational psychology services; Healthcare and rehabilitation services; Medical services; Therapy services; Pharmaceutical services; Physical therapy; Medical and healthcare analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to health or welfare.

Class 45: Analysis, appraisal, research, data, reporting, planning, advice, consulting, support and information services relating to health and safety at work; Licensing of computer software; Licensing of intellectual property rights.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 relevant goods and services are directed at business customers with specific knowledge or expertise, for example those in the human resources and healthcare sectors, as well as the general public. The degree of attention will vary from average to high, depending on the value and/or the technical complexity of the goods and services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier mark is a figurative mark composed of a white lower case letter ‘d’, set in a purple square with rounded corners.

The contested sign is composed of a simple figurative element, a curved black letter ‘d’. Below it is the verbal element ‘DEVISTAT’, in standard black upper case letters.

Neither the earlier nor the contested mark has any element that could be considered more distinctive than other elements.

Neither the earlier mark nor the contested mark has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, although the signs coincide to the extent that they both contain the letter ‘d’, there are noticeable differences between these elements. Firstly, they have different colours, namely white in the earlier mark and black in the contested sign. Secondly, the shapes differ, in that the element in the earlier sign is in a standard script, whereas the element in the contested sign is more round without a complete stem.

Furthermore, the marks differ because, in the earlier mark, the letter ‘d’ is set in a purple square with rounded corners, which has no counterpart in the contested sign. Moreover, in the contested mark, the letters ‘DEVISTAT’, written underneath the ‘d’, have no counterpart in the earlier sign.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛d’, present identically in both signs. The pronunciation differs in the sound of the letters ‛DEVISTAT’ of the contested mark, which has no counterpart in the earlier sign.

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

Conceptually, the public in the relevant territory will perceive the concept of a letter ‘d’ in both signs. However, the letter ‘d’ in the contested mark may also be perceived by the relevant public as the initial letter of the verbal element ‘DEVISTAT’.

The verbal element ‘DEVISTAT’ in the contested sign lacks any meaning in the relevant territory. Therefore, consumers will perceive it as a fanciful word.

In the light of the foregoing, and although the letter ‘d’ may be perceived as an initial letter in the contested sign, both signs will, nonetheless, be associated with the same concept of this single letter. Therefore, the signs are conceptually similar to a low degree.

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 and 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. 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’ (11/11/1997, C‑251/95, Sabél, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and 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).

It must be borne in mind that the relevant public are professionals in the European Union, for example in the human resource and healthcare sector, as well as the general public. The degree of attention is deemed to be average to high.

The similarities between the signs are limited to the letter ‘d’. Considering this, the way the letter appears in each sign is determinant. However, as discussed above, the shape and colour of this letter is depicted in a different manner in each sign. The letter ‘d’ in the earlier mark is in a more standard font, whereas the rounded ‘d’ in the contested mark is more elaborate.

Moreover, the signs also differ in the inclusion of the verbal element ‘DEVISTAT’ in the contested mark and in the purple background of the earlier sign, which has no counterpart in the contested sign. These elements are as important as the letter ‘d’ for the visual comparison of the signs, as the contested mark does not possess any element that is clearly more dominant than any other.

The additional verbal element ‘DEVISTAT’ also has an important aural impact, particularly for the part of the public that will not pronounce the letter ‘d’ of the contested sign. However, whether the letter ‘d’ of the contested mark is pronounced by the relevant public or not, the pronunciation of the marks differs substantially in length and rhythm.

Furthermore, although both signs will be associated with the letter ‘d’, that element in the contested sign could also be perceived as the initial letter of the verbal element ‘DEVISTAT’.

Considering all the above, the differences between the letters ‘d’ in the marks and the additional verbal and figurative elements of the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, regardless of whether the public has an average or high degree of attention and even assuming identity between the relevant goods and services. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Agueda MAS PASTOR

Lena FRANKENBERG GLANTZ

Karin KUHL

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.