OPPOSITION No B 2 741 828

Bode Chemie GmbH, Melanchthonstr. 27, 22525 Hamburg, Germany (opponent), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Observia, 8 bis, chemin des Graviers, 78600 Le Mesnil le Roi, France (applicant).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 741 828 is upheld for all the contested services, namely:

Class 38: Telecommunication services

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

2. European Union trade mark application No 15 328 321 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 328 321, namely against all the services in Classes 38 and 42. The opposition is based on European Union trade mark registration No 13 483 102. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 13 483 102.

In the present case, the date of filing of the contested trade mark is 13/04/2016.

Earlier trade mark No 13 483 102 was registered on 27/05/2015. Therefore, the request for proof of use is inadmissible.

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

Class 38: Telecommunications by means of platforms and portals on the Internet; providing access to computer programs on the Internet; providing access to information on the Internet, including by means of a contact management and communications platform; providing access to interactive computer systems; providing access to an Internet cloud (cloud computing); electronic mail.

Class 42: Design and development of computer hardware and software; development and providing of an app for smartphones; science and technology services; industrial analysis, research and development services; technical advice and consultancy; design, development, installation, monitoring, maintenance and updating of computer programs, programs for mobile electronic apparatus (programming of apps) and websites; electronic storage of messages, information, images and texts of all kinds.

The contested services are the following:

Class 38: Telecommunication services.

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

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 ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’ and ‘especially’, see a reference in judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested services in Class 38

The contested telecommunication services include as a broad category the opponent’s telecommunications by means of platforms and portals on the Internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 42

Science and technology services are identically contained in both lists of services.

The contested design services include as a broad category the opponent’s design of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested IT services include the opponent’s development of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested testing, authentication and quality control are included in, or overlap with, the opponent’s industrial analysis, research and development services. Therefore, they are identical.

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 identical are directed at the public at large, as well as at a professional public consisting of, for example, scientists, engineers and IT experts. The degree of attention may vary from average to high, depending on the specialised nature of the services or the terms of their purchase. The public may have a high degree of attention for the specialised services in Class 42 related to science, technology, industry analyses, etc.

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 mark is a figurative mark consisting of the verbal element ‘Observe’ written in blue title case letters and placed against the outline of a hand depicted in orange and yellow; all the elements are positioned on a grey background with round edges. The contested sign is a figurative mark that contains the verbal element ‘observia’ written in purple lower case letters and a decorative rhombus device consisting of smaller components in purple and yellow.

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.

The coinciding element ‘observ’ and the words it forms part of, ‘observe’ and ‘observia’, are not meaningful in certain territories, for example in those countries where Slavic and Baltic languages are spoken. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on those parts of the public that do not understand the signs’ verbal elements, for instance the Bulgarian-, Croatian-, Latvian-, Lithuanian-, Slovakian- and Slovenian-speaking parts of the public.

The verbal elements ‘observe’ and ‘observia’ in the two signs both convey the semantic content of the English verb ‘observe’, meaning, inter alia, ‘to watch carefully, to see, perceive, notice’. As stated above, part of the public at which the services are directed is made up of scientists, engineers and IT experts, considered to have at least a basic understanding of English. Therefore, a part of the relevant public, even the non-English-speaking public on which the comparison focuses, as defined above, will be able to perceive the concept of ‘observe’ in both signs. This understanding may be reinforced by the use of some specialised medical or technical terms with the same Latin root that have entered into the relevant languages; for example, ‘observatorija’ (observatory) and ‘obzervacija’ (observation) in Lithuanian and ‘обсерватория’, transliterated as ‘observatoriya’, (observatory) in Bulgarian, are terms used in science and medicine. Bearing in mind the nature of some of the services, which may suggest a certain need for ‘observation, paying of attention to, watching carefully’ to a particular object/process, it is considered that the common root of the two signs, relating to ‘observe; observation’, is somewhat allusive for some of the services concerned, for instance testing, authentication and quality control and telecommunications by means of platforms and portals on the Internet, industrial analysis, research and development services, science and technology services, and its distinctiveness is, therefore, slightly lower than average. In any event, for the public that does not perceive the abovementioned concept, the verbal elements are of normal distinctiveness.

In addition, the figurative element of the earlier mark, depicting a raised hand with the palm facing outwards, may be associated with the sign ‘stop’, which is a gesture commonly used to express a desire to take control of a person or a situation, and in particular to prohibit access or action. Bearing in mind that the services in Classes 38 and 42 involve communication, as well as computer and science services, the image may be perceived by the relevant public, inter alia, as a sign meaning ‘Stop!’ and indicating that something is confidential or protected, or that access is denied or limited. In this scenario, this element also alludes to the nature of the services in question, namely that, for example, they give protection or guard (through observation), and, consequently, it will receive less attention than other elements of the sign. Nevertheless, for the part of the public that does not perceive the figurative element as explained above, it is of normal distinctiveness.

Neither of the marks has a visually more dominant or eye-catching element.

Visually, the signs coincide in the letters ‘observ*(*)’, which are the first six letters of the verbal element of each mark. However, they differ in the endings of their verbal elements, namely the last letter, ‘e’, in the earlier mark and the last two letters, ‘ia’, in the contested sign. Furthermore, the signs differ in their stylisation and in the additional figurative elements referred to above. However, in addition to the possibly weak character of the figurative elements (explained above), when signs consist of both verbal and figurative components, 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). Furthermore, as stated above, the signs coincide in most of the letters of their verbal elements, with the coinciding letters appearing at their beginnings. In principle, consumers 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. Even though the coinciding parts of the signs are considered to have an allusive nature for some of the services, this does not prevent the verbal elements of the signs as a whole conveying quite similar visual impressions. Therefore, for all the reasons listed above, the signs are considered visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘observ**’, present identically in both signs. The pronunciation differs in the sound of their final letters, namely ‘e’ in the earlier mark and ‘ia’ in the contested sign. Therefore, regardless of the distinctiveness of the coinciding parts of their verbal elements, the signs are aurally similar to an average degree, as they coincide in most of the letters of their verbal elements.

Conceptually, reference is made to the findings set out above regarding the different perceptions of the signs’ verbal and figurative elements. To the extent that both verbal elements evoke a similar concept, albeit with an allusive character for some of the services in question, the signs are conceptually similar to a low degree.

For the remaining part of the public, which does not perceive the concept ‘observe’ in either sign, one of the signs (the contested sign) has no meaning in the relevant territory, while the figurative element of the earlier mark conveys a concept. Since one of the signs will not be associated with any meaning, the signs are conceptually not 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, the distinctiveness of the earlier mark as a whole must be seen as normal, although it consists of elements that are somewhat allusive for some parts of the public. Since the distinctiveness of the sign results from the way in which the elements are combined, the overall composition and graphical depiction of the mark render it distinctive to an average degree as a whole.

5. Global assessment, other arguments and conclusion

The services are identical and the degree of attention will vary between average and high, depending on the specification and conditions of purchase of the services involved.

As stated above, although the signs show some differences in their stylisation, additional figurative elements and final letters, these cannot be considered sufficient to overcome the likelihood of confusion for the relevant public. Firstly, 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).

In the present case, the signs are visually and aurally similar to an average degree, and, for a part of the public, conceptually similar to a low degree, since they coincide in most of the letters of their verbal elements (‘observ*(*)’). Furthermore, it was demonstrated that the figurative elements (the rhombuses and the hand) and the differing stylisation will have less impact on the public’s overall perception than the verbal elements of the signs, on which consumers usually focus. In addition, the public tends to pay more attention to the beginnings of the verbal elements of signs and, conversely, less to their endings.

Furthermore, 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 signs will be used for identical services, and this factor on its own is sufficient to counteract the differences between the signs.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Croatian-, Latvian-, Lithuanian-, Slovakian- and Slovenian-speaking parts of the public. 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 13 483 102. It follows that the contested trade mark must be rejected for all the contested services. It may proceed for the remaining, non-contested, goods and 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

Sandra KASPERIŪNAITÉ

Manuela RUSEVA

Boyana NAYDENOVA

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.