OPPOSITION No B 2 630 401

Red Electrica Corporacion, S.A., Paseo del Conde de los Gaitanes, 177, 28109 La Moraleja (Madrid), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Switspot GmbH & Co KG, Heiner-Fleischmann-Straße 9, 74172 Neckarsulm, Germany (applicant), represented by Nietzer & Häusler, Rechtsanwälte · Attorneys at Law. Notar, Im Zukunftspark 10, 74076 Heilbronn, Germany (professional representative)

On 27/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 630 401 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 763 817 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 763 817. The opposition is based on, inter alia, European Union trade mark registration No 7 054 125. 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.

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 European Union trade mark registration No 7 054 125.

1. The goods and services

The services on which the opposition is based are, inter alia, the following:

Class 38: Telecommunications.

Class 42: Scientific and 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: Recorded computer programs; Recorded computer software; Programs (Computer -) [downloadable software]; Computer software applications, downloadable; All solely for personnel management systems comprising personnel management, personnel time management, payroll accounting and/or events management.

Class 42: Computer programming; Software design services; Updating of software; Rental of computers and computer software; Maintenance of software; Computer system analysis; Installation of software; Data conversion of computer programs and data [not physical conversion]; Advisory services relating to computer programming; Monitoring of computer systems by remote access; Software as a service [SaaS]; consultancy in the area of information technology (IT); Cloud computing; Outsource service providers in the field of information technology; Technological consultation services; Computer technology consultancy; All solely for personnel management systems comprising personnel management, personnel time management, payroll accounting and/or events management.

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.

It should also be noted that the limitations at the end of the specifications of the contested goods and services in Classes 9 and 42 (all solely for personnel management systems comprising personnel management, personnel time management, payroll accounting and/or events management) do not influence the outcome of the comparison of the goods and services made below as the broad categories of the opponent’s services in Classes 38 and 42 are not restricted in any way and, therefore, do not exclude services for the purposes to which the contested goods and services are limited. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparisons, the aforementioned limitations will be taken into account but will not be mentioned in the comparisons that follow.

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 opponent’s broad category of design and development of computer software in Class 42 includes computer programming.

Programming is the writing of a computer program (software), which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

Therefore, programming services are closely linked to software. This is because manufacturers of software will also commonly provide 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 relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

In view of this, the contested recorded computer programs; recorded computer software; programs (computer -) [downloadable software]; computer software applications, downloadable are similar to the opponent’s design and development of computer software services in Class 42.

Contested services in Class 42

The contested computer programming; software design services; updating of software; maintenance of software; advisory services relating to computer programming; installation of software are included in the opponent’s broad category of design and development of computer hardware and software. Therefore, they are identical.

The contested computer system analysis; software as a service [SaaS]; consultancy in the area of information technology (IT); technological consultation services; computer technology consultancy; outsource service providers in the field of information technology; monitoring of computer systems by remote access; cloud computing are included in the opponent’s broad category of scientific and technological services and research and design relating thereto. Therefore, they are identical.

The contested data conversion of computer programs and data [not physical conversion] is at least similar to the opponent’s broad category of design and development of computer hardware and software which includes, inter alia, development of computer programs that can share the same distribution channels, target the same relevant public and be offered by the same providers.

The contested rental of computers and computer software are similar to the opponent’s telecommunications in Class 38 as these services are complementary, they may share the same purpose, can share the same distribution channels and be offered by the same providers.

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, while the opponent´s services are directed at the general public and at professionals, in view of the limitations of the goods and services of the contested sign, the latter are directed at a professional public only. Therefore, the relevant public for assessing the likelihood of confusion will be the professional public only.

The degree of attention will vary from average to higher than average depending on the price and sophistication of, in particular, the services in Class 42.

3. The signs

REC	Rec.EE
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).

The earlier mark is the word mark ‘REC’.

In particular for the English-speaking part of the relevant public, the verbal element ‘REC’ may be perceived as referring to the word ‘record’ or ‘recording’ in which case it could be perceived as an allusive reference to the intended purpose of the relevant services covered by the earlier mark. Therefore, in relation to such services, ‘REC’ would be considered to have a weak distinctive character. Although the verbal element ‘REC’ is not likely to generally be perceived by part of the relevant public in the Union, such as in Estonia, as referring to the English word ‘record’ or ‘recording’, the professional public for the relevant services in such parts of the Union is likely to be familiar with the meaning of the English term ‘REC’ and, therefore, also perceive it as only of a weak distinctive character.

The contested sign is the word mark ‘Rec.EE’. In the case of word marks, it is the word as such that is protected and not its written form.

The above considerations regarding the perception and the distinctiveness of the verbal element ‘REC’ in the earlier mark apply equally to this element of the contested sign, in particular taking into account that the goods and services are limited to a professional public and that the contested goods in Class 9 essentially consist of computer programs and software in relation to which the meaning of ‘REC’ may also be perceived as an allusive reference to the intended purpose of the goods.

As regards the second component of the contested sign, ‘.EE’, as pointed out by the opponent, this is likely to be perceived, at least by part of the relevant public and, in particular, by the average consumer in Estonia, as referring to the country code top level domain (ccTLD) of Estonia, ‘.ee’. This is even more so bearing in mind, as mentioned above, that word marks give protection to the word as such and not to its written form and that the contested sign thus also gives protection to the depiction of the word as ‘Rec.ee’ or ‘REC.ee’. Top level domain endings, such as ‘.ee’, only indicate the place where information can be found on the internet and are technical and generic elements, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, they may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related (21/11/2012, T-338/11, Photos/com, EU:T:2012:614, § 22). Therefore, the second component of the contested sign, ‘.EE’, will be devoid of any distinctive character for the part of the relevant public that perceives it as referring to the ccTLD of Estonia. However, it cannot be excluded that another part of the public in the relevant territory will not perceive this component as a reference to a top level domain in which case it would not be understood as having any particular meaning and would, therefore, be distinctive.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in Estonia who will perceive the second component of the contested sign, ‘.EE’, as consisting of the ccTLD of Estonia.

Visually, the earlier mark ‘REC’ is fully contained at the beginning of the contested sign, ‘Rec.EE’. The signs differ in the additional, non-distinctive, element ‘.EE’ of the contested sign. The coinciding component, ‘REC’, although of weak distinctiveness for the relevant professional public, is the only distinctive element of the contested sign and consumers generally tend to focus on the beginning of a sign when they encounter a trade mark as 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 visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REC’, present identically in both signs.

The additional verbal component, ‛.EE’, of the contested sign is likely to be omitted when consumers refer to the contested sign as it will merely be regarded by consumers as an indication of a website. Therefore, this element will barely have any impact (if at all) on the aural comparison of the signs. However, it cannot be fully excluded that some consumers may also pronounce it when referring to the contested sign.

Therefore, the signs are considered aurally at least highly similar.

Conceptually, the domain name indication ‘.EE’ in the contested sign merely suggests that the goods and services designated are offered on-line (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 63) and as the semantic content of the element ‘REC’ will be perceived by the relevant professional public in the relevant territory, the signs are conceptually highly 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, for the reasons outlined above, the earlier mark will be perceived as having a weak distinctive character.

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).

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 or economically linked undertakings.

In the present case, the relevant goods and services are identical or similar and the degree of attention of the relevant public will vary from average to higher than average.

The earlier mark, although of weak distinctiveness, still has a certain degree of distinctiveness and the signs have been found to be visually, aurally and conceptually highly similar.

Taking into account that the earlier mark is fully contained at the beginning of the contested sign and that the only difference between the signs, which are both word marks, is confined to a non-distinctive element that will merely be seen as a generic reference to a website, the Opposition Division considers that, although the relevant public will perceive ‘REC’ as only weakly distinctive, even the professional public that will display a higher level of attention at the time of the purchasing decision, is still likely to believe that the relevant goods and services sold under the different signs, even those that are only similar, originate from the same undertaking or from economically linked undertakings, in particular as there are no other distinctive elements that could help to differentiate the signs.

Considering all the above, there is a likelihood of confusion on part of the relevant public in Estonia. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 054 125. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right, Spanish trade mark registration No 2 836 599, invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anunciata SEVA MICO

Sam GYLLING

Denitza STOYANOVA-VALCHANOVA

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.