OPPOSITION No B 2 694 944

Reichle & De-Massari Holding AG, Binzstr. 32, 8620 Wetzikon, Switzerland (opponent), represented by Patent- und Rechtsanwaltskanzlei Daub, Bahnhofstr. 5, 88662 Überlingen, Germany (professional representative)

a g a i n s t

Smartrg Inc., 501 SE Colombia Shores Blvd., Suite 500, Vancouver Washington 98661, United States of America (applicant), represented by HGF Limited, 1 City Walk, Leeds, Leeds LS11 9DX, The United Kingdom (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 694 944 is partially upheld, namely for the following contested goods and services:

Class 9: Component feature of customized broadband modems and computer networking modems in the nature of embedded software for use in optimizing wireless functionality.

Class 38: Wireless broadband communication services.

Class 42: Developing customized software for others; Custom design and development of broadband modems and computer networking modems; Technical support services, namely, troubleshooting of computer software problems; Technical support services, namely, troubleshooting in the nature of the repair of computer hardware.

2. European Union trade mark application No 15 040 207 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 all the goods and services of European Union trade mark application No 15 040 207. The opposition is based on, inter alia, European Union trade mark registration No 12 181 244. The opponent invoked Article 8(1)(b) EUTMR.

1. The goods

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

Class 9: Electric, electronic apparatus, instruments and installations and parts and fittings therefor, all the aforesaid goods being for data processing; Measuring, signalling and checking (supervision) apparatus, instruments and installations and parts and fittings therefor; Telecommunications apparatus and instruments, and telecommunications installations consisting thereof, and parts and fittings therefor; Computer systems and parts and fittings therefor; Computer interface apparatus and programs; Computer software; Switchboxes [electricity]; Distribution boxes (electricity ); Electric and fibre-optic cables, electric lines; Identification threads and sheaths for electric wires; Wire bindings; Sheaths for cables and fibre-optic cables, electric lines; Coupling and distributor sleeves for electric and fibre-optic cables; Plugs, sockets and other contacts [electric connections]; Electricity junction boxes; Distribution boxes and adapters (electricity); Fibre-optic connectors.

The contested goods and services are the following:

Class 9: Component feature of customized broadband modems and computer networking modems in the nature of embedded software for use in optimizing wireless functionality.

Class 38: Wireless broadband communication services.

Class 42: Developing customized software for others; Custom design and development of broadband modems and computer networking modems; Industrial design services; Technical support services, namely, troubleshooting of computer software problems; Technical support services, namely, troubleshooting in the nature of the repair of computer hardware.

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 term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 component feature of customized broadband modems and computer networking modems in the nature of embedded software for use in optimizing wireless functionality are included in the broad category of opponent’s computer software. The goods are identical.

Contested services in Class 38

The contested wireless broadband communication services are similar to the opponent’s telecommunications apparatus and instruments as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are complementary.

Contested services in Class 42

The contested developing customized software for others are similar to the opponent’s computer software as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are complementary.

The contested technical support services, namely, troubleshooting of computer software problems are similar to the opponent’s computer software as they have the same purpose. They can also coincide in end user and distribution channels.

The contested custom design and development of broadband modems and computer networking modems are similar to the opponent’s telecommunications apparatus and instruments thereof as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are complementary.

The contested technical support services, namely, troubleshooting in the nature of the repair of computer hardware are similar to the opponent’s computer systems as they have the same purpose and they can coincide in end user and distribution channels.

The contested industrial design services refer to the art or process of designing manufactured products, including problems of designing such objects. These services are dissimilar to the opponent’s goods. This is because the contested services are of a specialised nature and are likely to be provided to businesses developing technologies. The goods and services under comparison have different natures, purposes and methods of use and they are not in competition. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels. Even if the applicant’s services may require the use of some of the opponent’s goods, the link is so remote to give rise to similarity.

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 target business customers with specific professional knowledge or expertise in the areas of telecommunications and IT as well as public at large. The degree of attention will vary from average to high depending on the nature of the goods and services at hand

3. The signs

Inteliphy	SMARTRG INTELLIFI
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 word ‘Inteliphy’ of the earlier mark and the word ‘INTELLIFI’ of the contested mark lack any clear meaning in the perception of the relevant public and are distinctive in relation to the goods and services in question. The same is valid for the word ‘smartrg’.

The marks have no elements that could be considered more distinctive or dominant than other elements.

Visually, the signs coincide in that the earlier mark, ‘Inteliphy’, and the contested sign’s element, ‘Intellifi’ share six out of nine the letters ‘INTEL-I---’. They differ in the endings ‘-phy’ of the word ‘inteliphy’ and ‘fi’ of the word ‘intellifi’. Furthermore, they also differ in the word ‘smartrg’ included at the beginning of the contested mark.

Although the word ‘intellifi’ does not appear at the beginning of the contested mark, it is readily identifiable as an independent distinctive component and is highly similar to the earlier mark’s verbal element ‘inteliphy’. Therefore, the signs are visually similar to an average degree.

Aurally, in some languages, the pronunciation of the words ‘inteliphy’ and ‘intellifi’ is highly similar if not identical (for example in English). This is because the letters ‘-phy’ of the word ‘inteliphy’ will be pronounced in the same way as the letters ‘-fi’ of the word ‘intellifi’. Consequently, for these parts of the public, the pronunciation differs only in the sound of the additional words ‛smartrg’ of the contested mark, which has no counterparts in the earlier sign. For the remaining part of the public, which will pronounce the letters ‘phy’ and ‘fi’ in a slightly different way (e.g. Slavic speaking public), the signs furthermore differ in this aspect. Overall, the degree of aural similarity between the signs is average.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 covered are from the same or economically linked undertakings.

The contested goods and services are partially identical, partially similar and partially dissimilar. The distinctiveness of the earlier mark is normal. The signs are visually and aurally similar to an average degree.

The differences between the marks are considered insufficient to counteract the similarities and to enable relevant consumers to safety distinguish between the marks, even if their degree of attention in relation to some of the goods and services in question is higher than average.

Although the contested mark contains an additional verbal element ‘Smartrg’ which is placed at the beginning of the contested mark to which the consumers normally attach more importance, this cannot be automatically assumed in each case, as likelihood of confusion has to be assessed on a case-by-case basis and depends on all the relevant circumstances. In the present case account should be taken of the fact that the element ‘intellifi’ of the contested sign, which is highly similar to the earlier mark’s verbal element ‘inteliphy’, is distinguishable in the contested sign and plays an independent distinctive role in it.

Therefore, the relevant public may be lead to believe that the identical and similar goods and services in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 181 244. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier mark.

The rest of the 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.

The opponent has also based its opposition on the earlier German trade mark registration No 302 013 003 129.6, registered for the goods in Class 9: Electric, electronic, measuring, signaling and controlling (supervision) apparatus, instruments and installations and parts and fittings therefor; computer installations, and parts and fittings therefor; computer interface devices and programmes; computer software; switchboxes (electricity); distribution cabinets (electricity); electric and fibre optic cables, electric conduits; cable identification threads and cable sheathings for electric conduits; electric wire connectors; cable sheathings for electric and fibre optic cables, electric conduits; connection and distribution sleeves for electric and fibre optic cables; sockets, plugs and other contacts (electric connections); connection boxes (electricity); distribution cabinets and distribution plugs (electricity); fibre optic connection components. Since this mark covers the same or narrower scope of goods, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Fabián GARCIA QUINTO

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.