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OPPOSITION DIVISION |
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OPPOSITION No B 2 679 911
Innovmetric Software Inc., 2014, rue Cyrille-Duquet, Suite 310, Québec, Ville de Québec G1N 4N6, Canada (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)
a g a i n s t
Leonext Unternehmensberatung GmbH, Bahnhofstrasse 7, 6301 Zug, Switzerland (applicant), represented by IP-Kanzlei Lang, Steingasse 10, 89073 Ulm, Germany (professional representative).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition
No B
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The
opponent filed an opposition against some of the services of European
Union trade mark application No
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 signs
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Earlier trade mark |
Contested sign |
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 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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The earlier mark is a figurative mark, which consists of only the image of a white wrench, inside a black circle, surrounded by two borders, the inner one in white and the outer one in black. As this element is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The contested sign is also a figurative mark, containing a figurative element and two verbal elements: the word ‘digitale’, in stylised black lower case characters and the word ‘WERKSTATT’, in standard black upper case characters. The word ‘digitale’ is understood in the vast majority of EU countries as indicating ‘involving or relating to the use of computer technology’, due to its identity or similarity to the equivalent word in their official languages, such as ‘digitale’ in Italian and ‘digital’ in Dutch, English, French, German and Spanish , etc. This word is therefore weak for this part of the public for the relevant services, because it simply describes a characteristic of the service. However, for the rest of the public, such as the Lithuanian- and Polish-speaking parts of the public, it has no meaning and it is distinctive. ‘WERKSTATT’ will be understood by German speakers as meaning repair shop or garage. Therefore, for German speakers this element can be allusive for the relevant services in the IT field and has a limited degree of distinctive character for them. For the rest of the relevant public, this word has no meaning and is distinctive.
The figurative element of the contested sign is very likely to be perceived as an orange abstract decorative element. However, due to its shape, it cannot be ruled out that a small part of the public could perceive it as a kind of tool or utensil.
In any case, this is the only element of the contested sign that could potentially resemble some of the features of the earlier sign, since, for a small part of the relevant public, the shape of this device might suggest a stylised depiction of a wrench.
However, it should be considered that, in the present case, the impact of the figurative element may be diminished, as in principle the verbal components of a sign usually have 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; 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).
In addition, in the present case, even considering that the expression ‘digitale WERKSTATT’ may be perceived as referring to ‘a digital repair shop’ by the German public, and thus allusive for the relevant services, the Opposition Division finds that, when encountering the sign, the attention of the German consumers will still be attracted by these verbal elements.
It follows from the above that, visually and conceptually, the overall impression of the signs under comparison is different, as they differ in their graphical depictions, stylisations and colours and, in particular, in the verbal elements, ‘digitale’ and ‘WERKSTATT’, of the contested sign. The earlier mark clearly depicts a black and white wrench and the orange device of the contested sign does not depict any specific tool. Moreover, even if a small part of the public does see the orange device as a wrench, the depiction as such has very little similarity to its counterpart in the earlier mark and is not able to counteract the impression of overall visual dissimilarity given by the other verbal and graphic elements. Therefore, it is concluded that the signs are not visually similar.
Likewise, the fact that the figurative element of the contested sign may evoke the concept of a utensil is not sufficient to establish any conceptual similarity between the signs considered as a whole. Indeed, as regards the contested sign, the attention of the relevant public will be attracted by the words ‘digitale’ and ‘WERKSTATT’, which have a clear concept particularly for the German-speaking part of the public. In contrast, the device in orange is too vague to evoke any specific concept and, even if a small part of the public will see it as a kind of wrench, it will not be able to overshadow the other elements of the sign. Therefore, the signs are not similar conceptually.
Aurally, the earlier mark is purely figurative, while the contested sign will be read as ‘digitale WERKSTATT’. Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conclusion
The present case concerns two figurative marks that coincide only in their figurative elements. The additional differentiating words of the contested sign, ‘digitale’ and ‘WERKSTATT’, will be understood in Germany and will be seen as allusive for the relevant services.
Nonetheless, in the view of the Opposition Division, there are still sufficient differences between the marks to enable the relevant consumers to distinguish them. First, at a visual level, the graphical depictions of the signs are quite different, as well as the overall stylisation of their figurative devices. Second, particular account must be taken of the differences based on the additional verbal elements of the contested sign, which, despite being allusive, cannot be ignored. In fact, the consumer’s eye will be drawn to the words in the contested sign. All of this leads the Opposition Division to conclude that the relevant consumer will not confuse the signs, even taking account of the most favourable circumstances for the opponent, namely that the relevant German-speaking public will understand the meaning of the wording ‘digitale WERKSTATT’.
This absence of a likelihood of confusion applies equally to the part of the public for which the elements ‘digitale’ or ‘WERKSTATT’ have no meaning, for example the Lithuanian- and Polish-speaking parts of the relevant public. This is because, as a result of the distinctive character of that element, this part of the public will perceive the signs as being even less similar.
Considering all the above, there is no likelihood of confusion between the signs under comparison. Therefore, the opposition must be rejected, as, according to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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
Francesca CANGERI SERRANO |
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Pierluigi M. VILLANI |
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.