OPPOSITION No B 2 785 601

Cartagon, S.L., C/Urano, 50, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

a g a i n s t

UTS innovative Softwaresysteme GmbH, Richmodstraße 6, 50667 Köln, Germany (applicant), represented by Schmitt Teworte-Vey Simon & Schumacher Partnerschaft von Rechtsanwälten mbB, Im Klapperhof 3-5, 50670 Köln, Germany (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 785 601 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software and computer programs for house, building and home ownership management and for forced administration; computers; computer software and computer programs for facility management; computer software and computer programs for document management and document administration; computer software and computer programs for book-keeping, dunning and invoicing; computer software and computer programs for deposit management; computer software and computer programs for the real estate industry.

Class 37: Installation and maintenance of computer systems; installation and maintenance of network, server and client systems; installation and maintenance of data protection systems.

Class 42: Development of computer software and computer programs, in particular for house, building and home ownership management and for forced administration; development of computer software and computer programs for the real estate industry; updating of computer software and computer programs on data networks; providing of computer software and computer programs on data networks; providing of computer software, computer programs and features on networks; software consultancy; hardware consulting services; services of an EDP programmer; EDP consultancy; computer programming; implementation of computer programs on networks; installation of computer programs and computer software; configuring computer networks by means of software; conversion of computer software, computer programs and data; maintenance and installation of computer software and computer programs; technical project management in the field of electronic data processing; rental of computer programs and software; maintenance of computer software and computer programs; online maintenance of computer software and computer programs; technical consultancy in connection with computer software and computer programs; technical consultancy in connection with the installation and maintenance of network systems; providing of memory space; data security services; computer centres and cloud services, in particular rental and providing of it infrastructures, for others; providing of computing capacity, data memories, network capacities and computer software.

Class 45: Providing and rental of computer software and computer programs.

2. European Union trade mark application No 15 560 618 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 15 560 618 for the figurative mark . The opposition is based on European Union trade mark registration No 6 354 641 for the figurative trade mark , as well as Spanish trade mark registrations No 2 713 146 and 2 713 144 for the word mark CARTAGON. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(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 marks on which the opposition is based, that are European Union trade mark registration No 6 354 641, Spanish trade mark registrations No 2 713 146 and 2 713 144.

The date of filing of the contested application is 20/06/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Spain from 20/06/2011 to 19/06/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 6 354 641

Class 9: Equipment for the data processing and computers except for use in the field of optics, in particular optical lenses; apparatuses for the registry, transmission, reproduction of sound; magnetic supports of registry except for use in the field of optics, in particular optical lenses, acoustic discs.

Class 35: Retail sales in commerce services and through world-wide computer networks of hardware, software and all type of computer material.

Class 38: Telecommunications, including services of access and connection by telecommunications to a world-wide computer network, services of address and union for telecommunications, communications by computer terminals and switchboards, rent of telecommunication apparatuses.

Class 42: Technological services, as well as services of investigation and design relative to them; design, elaboration, development, rent, installation and maintenance of computer software; analysis for the implantation of computer systems; programming for computers and switchboards; configuration of servers; rent of computers and computer software.

Spanish trade mark registrations No 2 713 146

Class 38: Telecommunications services; communications through computer terminals; electronic messaging; transmission online of computer software, data, signals, images and sound; telecommunications of voice and data; provision of services of mail; consultancy in the field of telecommunications; broadcast radio and television programs.

Spanish trade mark registrations No 2 713 144

Class 42: Services of research, development, installation, maintenance and rental of software; repair services for computers; services of consultation, information, studies and technical projects related to computing; hosting services of web sites; scientific and technological services as well as research and design services relating to them; services of industrial analysis and industrial research; legal services.

As a preliminary remark it is noted that the term ‘including’ used in the opponent’s list of services covered by the European Union trade mark No 6 354 641 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 (judgment of 09/04/2003, T-224/01, Nu-tride, EU:T:2003:107).

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 07/03/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/05/2019 to submit evidence of use of the earlier trade marks. On 10/05/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 A screenshot of the first page of the CARTAGON website: https://www.cartagon.com/ where the sign is represented showing the opponent’s activities such as apps, hosting, cloud, data center (Doc. 1).

 Map of the activity of the opponent’s website (www.cartagon.com) from the internet archive website ‘Wayback Machine’ showing that the opponent’s website was active from March 2, 2001 to January 18, 2019 (Doc. 2)

 Printouts of the opponent’s LinkedIn and Twitter accounts showing that the opponent was active on these online social networking from 2000 (LinkedIn) – ‘Cartagon is the leading provider in Spain of Managed services in the Cloud in Spain….’ – and 2009 (Twitter) – ‘We are already a Premier partner of Google Cloud, G Suite and Chrome…’ – (Docs. 3 and 4). In these printouts both the word ‘Cartagon’ and the figurative signs and are shown.

 Article from the opponent’s website https://www.cartagon.com/ regarding the award ‘Best Impact award by Cloud Services’ received by the opponent during a ceremony held on 27/06/2014 (Doc. 5)

 Article from www.globit.com, a website for professionals in IT, regarding an event called EuroCloud EXPO held in Madrid in 2016 where the sales manager of ‘Cartagon’ explained the ‘Hybrid Cloud Initiative’ developed by ‘Cartagon’ in collaboration with Google and its new Google Platform services (Doc. 6).

 Forty-two invoices, dated from 1/01/2011 to 20/11/2016. All the invoices are issued by the opponent to clients located in Spain (e.g. Valencia, Madrid, Valladolid and Barcelona) with the exception of two invoices issued to clients located in London (United Kingdom) and Detroit (United States of America). The sign is shown in the upper part of the invoices. The invoices are in Spanish and have different subject matter partly translated into English by the opponent in its observations of 10/05/2019. They are mainly related to licensees of software, maintenance (backup), rental of computer hardware (firewell hardware, server) server housing (Housing), and connectivity services (Connectivity, set up fee, fibre, Transit IP) as well as cloud services (Cloud VPN, Google Cloud platform). Even if some invoices’ subject matter , such as ‘energy consumption’ or ‘certificate SSL’, are not very clear, they may refer to services included in global services such as Server housing. However, the opponent did not provide more detailed explanations in this regard (Doc. 7).

The applicant argues that the opponent did not submit translations of some of the evidence of use and, therefore, that this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account that relevant documents, such as the invoices, have been partly translated in those parts that are not self-explanatory, and that the other documents are partially in Spanish and partially in the language of the proceedings (Docs. 2, 3, 4, 5 and 6) the Opposition Division considers that it is not necessary in this case to request a translation.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services, for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As regards the place of use the documents submitted by the opponent show that the place of use is ‘Spain’. This can be inferred from the fact that the language of the invoices and part of the other documents is Spanish, the currency mentioned in the invoices (‘euro’) and the addresses of customers, which are mainly located in ‘Spain’. Therefore, the evidence relates to the relevant territory.

Concerning the time of use, most of the evidence, such as the invoices and the press articles (Docs 5 and 6), is dated within the relevant period. Only few invoices are dated outside the relevant period. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the invoices referring to use outside the relevant period confirm use of the opponent’s mark within the relevant period. This is because the use they refer to is very close in time to the relevant period (only a few months before, or after, the relevant period).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It is true that the total amount in euros of the invoices, as the applicant argued, is not high. However, the quite significant number of invoices (i.e. 42 invoices) reflects a substantial number of commercial transactions. Moreover, it is noted that the invoices submitted by the opponent show a constant use of the marks throughout the whole relevant period as there is a certain number of sample invoices for each year of the relevant period addressed to customers in different places in Spain and in the United Kingdom. In any case, the invoices should be taken as examples of sales made and not as the total sales made under the marks.

Therefore, taking in consideration that use of the mark need not be quantitatively significant for it to be deemed genuine, the invoices together with the other documents submitted by the opponent are sufficient to demonstrate that the use of the trade marks at issue was not merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

As stated above, the opponent must submit proof of use of the European Union trade mark No 6 354 641 and of the Spanish trade marks No 2 713 146 and 2 713 144. The evidence submitted by the opponent, in order to prove genuine use of the earlier European Union trade mark, relates mainly to Spain. As explained above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not, and, according to the case-law, use in one Member State can be sufficient. Moreover, one of the aims pursued by the EUTM system is to be available to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

Therefore, the Opposition Division considers that, assessed as a whole, the documents filed, namely the invoices, the information in the social networking (LinkedIn and twitter) and the press articles provide sufficient indications concerning the extent of use of the earlier marks.

As regards the nature of use, it shall be recalled that in the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, it is apparent from the evidence that the opponent uses the earlier marks on the market in different forms, such as the verbal mark ‘Cartagon’ or the figurative versions , and .

Therefore, the marks are used as registered (i.e. the word mark ‘CARTAGON’ and the figurative mark ) or in stylised versions different to the registered ones. Regarding this, it is considered that these versions are acceptable variants of the trade marks as registered in accordance with Article 18(1), second subparagraph, point (a), EUTMR. This is because the stylisation fulfils essentially a decorative purpose in the mark in question. Consequently, they do not alter the distinctive character of the registered trade marks (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all goods and services covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub category or sub categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub categories.

(14/07/2005, T 126/03, Aladin, EU:T:2005:288, § 45 46.)

In the case at issue an overall assessment of the evidence shows that the marks have been used for some IT and telecommunication services. It is true, as the applicant argued, that part of the documents are specifically related to cloud computing services and that these services are not mentioned in the list of services covered by the earlier trade marks. However, ‘cloud computing’ can refer to the use of a hardware and software to deliver several specific services over a network, which are covered by the earlier marks, such as making available software applications on the Internet (i.e. rent of computer software covered by the earlier EUTM No 6 354 641 and rental of software covered by the earlier Spanish trade mark No 2 713 144). Moreover, even if some invoices’ subject-matter are not very clear for persons that are not specialized in the IT field, the vast majority is clear enough to be understood as referring to specific IT services offered under the trade marks at issue, namely software licenses, installation and maintenance of software, rental of computers in Class 42 and connectivity services in Class 38. In this regard, it is noted that the services of ‘server housing’, mentioned in the invoices’ subject-matter , may also include the installation and maintenance of the servers that are installed.

In the present case, as said above, the evidence proves, inter alia, use of the earlier marks for ‘provision of connectivity services’, which can be considered to form an objective subcategory of the broader category of ‘telecommunication services’ in Class 38 covered by the European Union trade mark registration No 6 354 641 and by Spanish trade mark registration No 2 713 146. Moreover, as explained above, the evidence proves use for ‘software licenses’ (which is a synonym of rental of software), ‘installation and maintenance of software’ and ‘rental of computers’ that are specifically covered by the earlier marks. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks for the following services:

European Union trade mark registration No 6 354 641

Class 38: Provision of connectivity services.

Class 42: Rent, installation and maintenance of computer software; rent of computers and computer software.

Spanish trade mark registrations No 2 713 146

Class 38: Provision of connectivity services.

Spanish trade mark registrations No 2 713 144

Class 42: Installation, maintenance and rental of software.

The Opposition Division notes that the abovementioned services are either explicitly covered by the specific services for which the earlier marks are registered, are included in broader categories of that specification (‘provision of connectivity services’, as said above, is included in the broad category of ‘telecommunication services’ in Class 38 of the Spanish trade mark No 2 713 146 and European Union trade mark No 6 354 641) or include as broader categories some opponent’s specific services covered by the earlier trade marks (e.g. ‘provision of connectivity services’ include as broad category ‘communications through computer terminals in Class 38 of the Spanish trade mark registrations No 2 713 146).

However, the evidence does not succeed in establishing genuine use of the earlier marks for all the goods and services on which the opposition is based. The evidence mainly relates to the abovementioned services, whereas there is no or very little reference to the remaining goods and services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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 6 354 641.

a) The goods and services

The services on which the opposition is based and for which genuine use has been demonstrated as set out above are the following:

Class 38: Provision of connectivity services.

Class 42: Rent, installation and maintenance of computer software; rent of computers and computer software.

The contested goods and services are the following:

Class 9: Computer software and computer programs for house, building and home ownership management and for forced administration; computers; computer software and computer programs for facility management; computer software and computer programs for document management and document administration; computer software and computer programs for book-keeping, dunning and invoicing; computer software and computer programs for deposit management; computer software and computer programs for the real estate industry.

Class 35: Computerised file management; on line advertising on a computer network; organizational project management in the field of electronic data processing; professional business and organisational consultancy in connection with house, building and home ownership management and for forced administration; professional business and organisational consultancy in connection with the real estate industry; professional business and organisational business consultancy.

Class 37: Installation and maintenance of computer systems; installation and maintenance of network, server and client systems; installation and maintenance of data protection systems.

Class 41: Organisation, arranging and conducting of seminars, training courses, webinars, online seminars and live chats; workplace coaching through remote maintenance.

Class 42: Development of computer software and computer programs, in particular for house, building and home ownership management and for forced administration; development of computer software and computer programs for the real estate industry; updating of computer software and computer programs on data networks; providing of computer software and computer programs on data networks; providing of computer software, computer programs and features on networks; software consultancy; hardware consulting services; services of an edp programmer; edp consultancy; computer programming; implementation of computer programs on networks; installation of computer programs and computer software; configuring computer networks by means of software; conversion of computer software, computer programs and data; maintenance and installation of computer software and computer programs; technical project management in the field of electronic data processing; rental of computer programs and software; maintenance of computer software and computer programs; online maintenance of computer software and computer programs; technical consultancy in connection with computer software and computer programs; technical consultancy in connection with the installation and maintenance of network systems; providing of memory space; data security services; computer centres and cloud services, in particular rental and providing of it infrastructures, for others; providing of computing capacity, data memories, network capacities and computer software.

Class 45: Licensing of computer programs and software; Providing and rental of computer software and computer programs.

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 ‘in particular’ used in the applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 services in Class 42 are IT services all related to rental of software and computers as well as installation and maintenance of software. These services are closely linked to the contested goods in Class 9 which are various kinds of computer software and computers. This is because companies that provide computers or computer software also commonly provide software-related services such as installation or maintenance of the software. They also commonly provide various types of advisory and consultancy regarding software and they may have both the options of selling software or renting it. Therefore, although the nature of the goods and services is not the same, the producers/providers of these goods and services can be the same. Moreover these goods and services can be provided/offered through the same distribution channels and target the same relevant public. Furthermore, they can be complementary. Therefore, they are considered similar.

Contested services in Class 35

The contested services in Class 35 are all related to business management and administration, office functions as well as advertising. On the other hand, the opponent’s services in Classes 38 and 42 are telecommunication and IT services.

In view of the characteristics of the services at issue, it is considered that they do not have any relevant point of similarity that can justify finding some similarity between them. They have different natures and purposes. They come from different undertakings and are offered through different distribution channels. They are neither in competition, nor are they complementary. Therefore, all contested services in this class are dissimilar to the opponent's services.

Contested services in Class 37

The contested installation and maintenance of computer systems; Installation and maintenance of network, server and client systems; Installation and maintenance of data protection systems are at least similar to the opponent’s installation and maintenance of computer software in Class 42 as they have at least the same purpose and can be offered by the same providers through the same distribution channels. Moreover they target the same relevant public.

Contested services in Class 41

The contested organisation, arranging and conducting of seminars, training courses, webinars, online seminars and live chats; workplace coaching through remote maintenance are all kinds of education and instruction services. The opponent’s services in Classes 38 and 42 are telecommunication and IT services.

These services do not have any relevant point of similarity. They have a different nature and purpose. They come from different undertakings and are offered through different distribution channels. They are neither in competition, nor are they complementary. Therefore, all contested services in this class are dissimilar to the opponent's services.

Contested services in Class 42

The contested services in this class are either identical or at least similar to the opponent’s rent, installation and maintenance of computer software; rent of computers and computer software. This is because these services are either identically contained in both lists (including synonyms or despite a slightly different wording), or they are included in (or overlap with) the broader category of these opponent’s services (e.g. the contested updating of computer software and computer programs on data networks overlap with the opponent’s maintenance of computer software), or because they usually coincide in at least producer, relevant public, distribution channels with these opponent’s services (e.g. the contested development of computer software and computer programs, in particular for house, building and home ownership management and for forced administration are similar to the opponent’s rent of computer software in the same Class).

Contested services in Class 45

Although Class 45 of the Nice Classification mainly includes legal and security services (for the protection of property and individuals) and personal and social services, as reflected in the explanatory notes for this class, it is clear that the contested providing and rental of computer software and computer programs within the usual and natural meaning of this terms refer to information technology services that are directly related to computer software.

As such the contested services are similar to the opponent’s rent of computer software as they have the same purpose and can be offered by the same providers through the same distribution channels. Moreover they target the same relevant public.

The contested licensing of computer programs and software are legal services in the field of intellectual property rendered by lawyers specialized in IP law which do not have relevant points of contact with the opponent’s services in Class 38 and 42. They have different purposes and natures. Moreover their usual providers and distribution channels are different. Therefore they 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.

In the present case, the goods and services found to be similar are directed at the public at large and partly at business customers with specific professional knowledge or expertise in IT.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) 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 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.

When an opposition is based on a European Union trade mark, as in the present case, in conducting the aural comparison account must be taken, in principle, of all the different pronunciations and meanings of the signs by the relevant public in all the official languages of the Member States.

In the present case, for a part of the public, such as the French-speaking part of the public, the pronunciation of the verbal elements ‘cartagon’ of the earlier mark and ‘KARTHAGO’ of the contested sign is highly similar as the sounds of the earlier mark’s syllables ‘CAR’ and ‘TA’ is identical to the sound of the contested sign’s syllables ‘KAR’ and ‘THA’, respectively and also because the stress lies on the last syllable in both signs’ verbal elements conferring on them the same intonation. However, the pronunciation of these verbal elements is less similar for that part of the public for which the sounds of the syllables ‘TA’ of the earlier mark and ‘THA’ of the contested sign is quite different, such as the English-speaking part of the public or for that part of the public for which the sounds of the first syllables ‘CA’ of the earlier mark and ‘KA’ of the contested sign is different, such as the Polish-speaking part of the public.

Therefore, the Opposition Division will focus the assessment of the comparison of the signs in relation to the part of the public for which the words ‘cartagon’ and ‘KARTHAGO’ are aurally highly similar – such as the French-speaking part of the public.

The earlier mark is a figurative mark consisting of the verbal element ‘cartagon’ in slightly stylised lower case letters and a semi-ellipse at the right side of this word element. These elements are within a rectangular blue background. ‘Rectangular backgrounds are simple geometrical shapes that are commonly used in trade to highlight the information contained within; consumers do not usually attribute any trade mark significance to such shapes’ (15/12/2009, T 476/08, Best Buy, EU:T:2009:508, § 27). Therefore, the blue rectangular background is non-distinctive.

The contested sign is a figurative mark consisting of the word element ‘KARTHAGO’ in slightly stylised upper case blue letters and three squares of different sizes at the right-hand side.

The vast majority of the public under analysis will not attach any meaning to the verbal elements ‘cartagon’ and ‘KARTHAGO’, which are, therefore, distinctive to a normal degree. Contrary to the opponent’s opinion, these verbal elements are quite different from the French word for the city of ‘Carthage’ to create an association with that city.

The figurative elements placed on the right-hand side of each of the earlier mark and contested sign (i.e. the semi-ellipse and the three squares, respectively) are geometrical shapes playing a decorative function within the signs and therefore, contrary to the applicant’s opinion, their distinctiveness is very limited.

The slight stylisation of the verbal elements of the signs under comparison will be perceived as merely a decorative depiction of these elements. Therefore, contrary to the applicant’s opinion, it has a limited impact on the consumers.

Visually, the signs coincide in the sequence of letters ‘*ART*AGO*’. However, they differ in the first letters ‘C’ and ‘K’ of the earlier mark and contested sign, respectively and in the additional letters ‘H’ placed in the middle of contested sign as well as the letter ‘N’ placed at the end of the earlier mark.

The signs differ also in their figurative elements including their stylisations that for the reason explained above will have a limited visual impact on the consumers.

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

Aurally, taking into consideration the previous assertions concerning the aural comparison of the marks, they are considered aurally similar to a high degree as they differ only in the sound of the additional letter ‘N’ placed at the end of the earlier mark.

Conceptually, as stated above, the verbal elements of the signs are meaningless for the vast majority of the French public under analysis. Moreover the figurative elements do not convey any specific or relevant meaning. Therefore, a conceptual comparison between the signs is not possible, and 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.

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 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 because of the normal distinctiveness of its word element, notwithstanding the presence of non-distinctive or weak figurative elements, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 contested goods and services have been found partly identical, partly similar and partly dissimilar to the opponent’s services. The signs are visually similar to a below average degree and aurally similar to a high degree. Moreover, conceptually the marks do not convey any semantic content which could create a distance between them in the perception of the relevant public. The degree of distinctiveness of the earlier mark is normal.

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).

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 view of the fact that the signs are aurally similar to a high degree, and bearing in mind that they are also visually similar to a below average degree, and that they cannot be distinguished by any semantic meaning, the Opposition Division considers that the relevant French public, including that displaying a high degree of attention, is likely to confuse the signs at issue.

Considering all the above, and applying the interdependence principle, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 354 641. 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.

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

The rest of the contested 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 Spanish trade mark registrations No 2 713 146 and 2 713 144 for the word mark ‘CARTAGON’.

Following the assessment of the proof of use carried out above, the other earlier rights invoked by the opponent cover a narrower scope of the services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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 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

Catherine MEDINA

Angela DI BLASIO

María del Carmen COBOS PALOMO

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.