OPPOSITION No B 2 686 338

Telefonica, S.A., Gran Vía, 28, 28013 Madrid, Spain (opponent), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative)

a g a i n s t

Itarus Limited, Itarus House Tenter Road, Moulton Park, Northampton NN3 6PZ, United Kingdom (applicant), represented by Gallafents LTD., 1 Sans Walk, London, London City EC1R 0LT, United Kingdom (professional representative).

On 31/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 686 338 is upheld for all the contested services.

2. European Union trade mark application No 14 958 011 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 958 011. The opposition is based on European Union trade mark registration No 9 667 841. 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: Scientific, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission and reproduction of sound or images; Magnetic data carriers, recording and optical discs; Automatic vending machines and mechanisms for coin-operated apparatus; Calculating machines, data processing equipment and computers, recorded computer programs, screens (computer and television), keyboards (computer), computer mice, CD-ROMs, telephone apparatus, image and sound transmitters and receivers, telephone exchanges; Telephones; Telephone repeaters; Answerphones; Fire-extinguishing apparatus; Electronic publications (electronically-downloadable); Electronic diaries; Intercommunication apparatus; Interfaces (for computers); Game programs; Electronic pens (visual display units); Readers (data processing equipment); Computer peripheral equipment; Magnetic cards; Television apparatus; Coin-operated mechanisms for television sets; Modems.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Book binding articles; Photographs; Stationary; Artists' materials; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks (moulds); Printed publications, magazines and books.

Class 35: Telephone answering for unavailable subscribers, message transcription, business reports, advertising; Wholesaling and/or retailing in establishments and via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording and optical discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, recorded computer programs, computer and television screens, computer keyboards, computer mice, CD-ROMs, telephone apparatus, transmitters and receivers of sound and images, telephone exchanges, telephones, telephone repeaters, telephone answering machines, fire-extinguishing apparatus, downloadable electronic publications, electronic agendas, intercommunication apparatus, interfaces for computers, games programs, electronic pencils (visual display units), readers (data processing equipment), computer peripheral devices, magnetic encoded cards, television apparatus, coin-operated mechanisms for television sets, modems; Sales promotion for others.

Class 41: Education services and entertainment; Arranging sports and cultural activities; Exhibitions (organization of -) for cultural or educational purposes; Publication of texts (other than publicity texts); Use of on-line electronic publications (not downloadable by data transmission); On-line publication of electronic books and journals (not downloadable); Publication of books; Entertainment via telephone; Publishing services and Production of radio broadcasts.

Class 42: Scientific and technological services and research and design relating thereto; Scientific and industrial analysis and research services; Design and development of computer hardware and software; Computer programming services; Technical advice and consultancy; Engineering, installation of computer software, computer software design, construction drafting, technical project studies.

The contested services are the following:

Class 35: Checking and validation services for computer-generated data; checking and validation services for business processes.

Class 40: Advisory services with respect to printing; checking and validation services in connection with print fidelity.

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 services in Class 35

The contested checking and validation services for computer-generated data; checking and validation services for business processes are services which normally involve checking the consistency, quality, and accuracy of business processes (confirming that all business rules are working correctly and that all underlying transactions are performing properly across every enterprise application used in the business process). When defects are identified, these problems are logged for repair by IT personnel, business analysts or the software vendor, as appropriate.

The opponent’s business reports are organized statements of facts or events or any situation relating to business or commercial interests prepared after an investigation and presented to the interested persons with or without recommendations.

These services under comparison may all form a part of business processes and can therefore be provided by the same companies and target the same public. Moreover, they also may have the same purpose. Therefore, the services are considered to be similar.

Contested services in Class 40

The contested advisory services with respect to printing; checking and validation services in connection with print fidelity are services which can for example help consumers to develop printing security strategies to protect their businesses. These services are lowly similar to the opponent’s installation of computer software, included in Class 42 which may include installation of computer software for printers. The providers of installation of computer software for printers may also provide with respect to printing; checking and validation services in connection with print fidelity. Therefore, the services may coincide in the same provider and also the same user.

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 services found to be similar (to a low degree) are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specialised nature of the services (for example high attention in relation to the services in Class 35).

3. The signs

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 sign is a figurative mark consisting of the single word ‘vivo’ in blue bold standard lower case letters. The contested sign is a figurative mark consisting of the two hexagons looking like figurative elements, attached together. The upper hexagon contains the letters ‘Vi’ while the lower one contains the letters ‘Vo’.

The element ‘VIVO’ included in both of the marks will be understood as the adjective ‘alive, sprightly, vivid’ or the verb ‘I live’ in Spanish, Italian and Portuguese. For the remaining part of the public neither of the signs has a meaning. As this element is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements. The same is valid for the earlier mark, which obviously also has no dominant element.

Visually, the signs coincide in the letters ‘VIVO’. They only differ in the stylisation of the letters and in the additional figurative elements of the contested mark. However, 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 highly similar.

Aurally, despite of the fact that in the contested mark, the letters ‘vi’ and ‘vo’ are written separately, the signs are considered aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘the adjective ‘alive, sprightly, vivid’ or the verb ‘I live’ in Spanish, Italian and Portuguese’, the signs are conceptually identical for this part of the public. For the remaining part of the public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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 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

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.

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 services were found to be partially similar and partially similar to a low degree.

The signs are aurally and, for a part of the public, conceptually identical, and visually highly similar. The earlier mark has an average degree of distinctiveness.

Taking into account that the differences between signs arise from the stylisation of the letters and from the figurative element of the contested mark to which the consumers will pay less attention, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public, even considering its higher than average degree of attention, is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question (even those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 9 667 841.

It follows that the contested trade mark must be rejected for all the contested services.

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

Judit NÉMETH

Janja FELC

Francesca CANGERI SERRANO

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.