OPPOSITION No B 2 740 481

Innovation Group Solutions, 9 avenue des Andes, 91940 Les Ulis, France (opponent), represented by Mathieu Davy, 98 rue de Varenne, 75007 Paris, France (professional representative)

a g a i n s t

HTC Corporation, No.23, Xinghua Road, Taoyuan District, 330 Taoyuan City, Taiwan (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 18/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 740 481 is partially upheld, namely for the following contested goods:

Class 9: Computer programmes, recorded; computer software, recorded; computer programs [downloadable software]; computer software applications, downloadable.

2. European Union trade mark application No 15 284 003 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 284 003 for the word mark ‘ICE VIEW’. The opposition is based on French trade mark registration No 3 812 447 for the figurative mark . 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.

a) The goods

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

Class 9: Computer software intended for and/or used by insurance claims administration and damaged vehicle repair companies; computer programs for business services and solutions in the field of motor vehicles.

The contested goods are the following:

Class 9: Cases and/or faceplates for mobile phones, smartphones, cellular phones, portable computers, tablet computers, personal digital assistants and wireless handheld digital electronic devices; computer programmes, recorded; computer software, recorded; computer programs [downloadable software]; computer software applications, downloadable.

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.

The contested computer programmes, recorded; computer programs [downloadable software] overlap with the opponent’s computer programs for business services and solutions in the field of motor vehicles. Therefore, they are identical.

The contested computer software, recorded; computer software applications, downloadable overlap with the opponent’s computer software intended for and/or used by insurance claims administration and damaged vehicle repair companies. Therefore, they are identical.

The contested cases and/or faceplates for mobile phones, smartphones, cellular phones, portable computers, tablet computers, personal digital assistants and wireless handheld digital electronic devices have no point of connection with the opponent’s goods which are software. These goods have different nature, purpose and method of use. It is unlikely that these goods may coincide in their commercial origin and distribution channels. Moreover, they are neither complementary nor in competition. Therefore, these goods are dissimilar.

b) 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.

When the contested goods target the general and professional public and the opponent’s goods target a professional public exclusively, the relevant public for assessing likelihood of confusion will be the professional public only. Therefore, in the present case, the goods found to be identical are directed at business customers with specific professional knowledge or expertise in IT, management and/or administration.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and their price.

c) The signs

	ICE VIEW
Earlier trade mark	Contested sign

The relevant territory is France.

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 verbal elements ‘ICE’ in both signs and ‘VIEW’ in the contested sign are rather basic English words, meaning ‘water frozen in the solid state’ and ‘a sight or prospect, typically of attractive natural scenery, that can be taken in by the eye from a particular place’ or ‘a way of regarding situations or topics’, respectively. These words will be understood by the French public, all the more so since, as seen above, it consists of professionals in IT, management and/or administration who are usually more familiar with English than the public at large. As a whole, the contested sign will be understood as ‘a sight of ice’ or ‘a way of regarding ice’. In any case, the elements of the signs do not give any indication about the nature or the characteristics of the relevant goods. Therefore, they are distinctive.

The figurative elements of the earlier mark, namely the white circular arcs and the rectangular background in different shades of blue, do not convey any clear meaning and, albeit not particularly striking, still remain sufficiently original and are, therefore, distinctive. 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).

The earlier mark has no element that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the distinctive verbal element ‘ICE’, placed in the initial part of the contested sign. The contested sign is a word mark and, thus, the word itself is protected, not its written form. Therefore, it is irrelevant whether the contested sign is represented in lower or upper case letters. However, they differ in the second verbal element, ‘VIEW’, of the contested sign and, as regards the earlier mark, in its figurative elements and aspects (with less impact than the word ‘ICE’), namely the white circular arcs, the blue rectangle and the slight stylisation of the letters.

Therefore, the signs are similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ICE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘VIEW’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs include the same concept of ‘ICE’, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In the present case, the goods found to be identical are directed at professionals whose degree of attention may vary from average to high. The signs are visually similar to a below average degree and similar to an average degree from the aural and conceptual points of view. The earlier mark enjoys an average degree of inherent distinctiveness.

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). In the present case, the identity of the relevant goods offsets the lesser degree of similarity between the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 partly well founded on the basis of the opponent’s French trade mark registration No 3 812 447.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Helen Louise MOSBACK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.