OPPOSITION No B 2 932 708

myfactory Holding GmbH, Rosenheimer Straße 141 h, 81671 München, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte Partg MBB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

BDWin, 11 rue Louis Kerautret Botmel - Centre d'affaires Athéa, 35000 Rennes, France (applicant), represented by Olivier Fedon, 1 rue de Paris Immeuble Atalis 1, 35512 Cesson Sevigne, France (professional representative).

On 27/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 932 708 is partially upheld, namely for the following contested services:

Class 35: Advertising; Business management; Business administration; Office functions; Direct mail advertising; Arranging subscriptions to telecommunication services for others; Presentation of goods on communication media, for retail purposes; Business management and organization consultancy; Business management for freelance service providers; Computerised file management; Web site traffic optimisation; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations services; Company auditing (business analysis); The bringing together, for business purposes, of sellers and purchasers on a single interface accessible online; Providing of a database for evaluating goods and services provided online for buyers and sellers; Arranging of subscriptions to a website enabling customers to order online; The bringing together, for business purposes, of professional and/or non-professional contacts, namely the creation of business contacts for the purchase, sale, exchange, rental and stock disposal of all kinds of new or second-hand industrial equipment in the fields of agrifoodstuffs, industrial building construction, electricity, chemistry, cosmetology, pharmacy, control, measuring, regulation, instrumentation, vision, dust removal, emissions protection, electronics, energy, packaging, but also in the fields of conditioning, various kinds of industrial equipment, casting, training, industrial supplies and equipment, fluid and air management, sealing, filtration, printing, logistics, building, transportation, machine tools, workshop machines, woodworking machines, maintenance, computer-aided maintenance management, and in the fields of subcontracting of services, handling, logistics, storage, lifting, conveying, computer hardware, mechatronics, automatic devices, robotics, measuring, quality control, weighing, plastics technology and rubber, metering, processes, vibratory equipment, mixing, homogenisation, dispersion, size and appearance modification, drying, separation, and in the fields of screening, hygiene, the environment, protection, personal protection equipment, cleaning, textiles, sheet metal manufacture, wine-making for professionals and individuals; Presentation of goods and services on all kinds of communications media, in particular for retailing and online sale, in particular rental of all kinds of movable property or real estate, rental of advertising space, searching for job advertisements or providing of staff; Business administration services for processing sales made on the internet; Promotion of goods for others; Price comparison services; Business consultancy and commercial information relating to sales prospecting; Management of customer accounts; business data analytics; Conducting of searches in computer files and databases on the internet and on computer networks, for others, relating to business matters and offers for industrial goods; Maintenance and compilation of data in computer databases for commercial purposes; Management and processing of computerised invoices; Presentation of goods and services on all kinds of communications media for retailing and online sale, in particular of machine tools, materials, industrial equipment, tooling, equipment for structural works, agricultural equipment, professional equipment for transport and handling, or any other equipment for use in industry.

Class 38: Telecommunications; Information about telecommunication; Communications by computer terminals; Communications by fiber optic networks; Radio communications; Communications by telephone; Provision of on-line forums; Providing access to databases; Providing of access to databases enabling users to select and order goods online.

Class 42: Computer software design; Software development; Installation of software; Maintenance of software; Updating of computer software; Computer programming; Computer system analysis; Computer system design; Information technology [IT] consultancy; Electronic data storage; Designing, managing and monitoring online forums for discussion.

2. European Union trade mark application No 16 120 404 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 120 404 for the figurative mark , namely against all the services in Classes 35, 36, 38 and 42. The opposition is based on European Union trade mark registration No 14 964 324 for the word mark ‘myfactory’ and German trade mark registration No 30 016 221 for the word mark ‘MyFactory’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

European Union trade mark registration No 14 964 324 for the word mark ‘myfactory’ (earlier mark 1)

Class 9: Computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) e-commerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI).

Class 35: Retail services for computer software; business consulting; outsourcing services [business assistance]; business management services; business administration; office functions; database services in connection with computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) ecommerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI); digital data processing in connection with computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) e-commerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI).

Class 38: Providing multiple user access to computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) e-commerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI) as a service (SaaS) and/or by way of cloud computing; providing multiple user access to databases for the storage and/or retrieval of business information as a service (SaaS) and/or by way of cloud computing.

Class 42: Creating, development, design and maintenance of computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) ecommerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI); providing computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) e-commerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI) as a service (SaaS) and/or by way of cloud computing; technical support services, including, troubleshooting of computer programs, computer software and software platforms problems, answering questions on software functionality, and providing software installation, set-up and customization services; hosting services; cloud computing; server hosting; provision of consulting, implementation, support, endof- life in connection with computer programs, computer software and software platforms for businesses; data storage.

German trade mark registration No 30 016 221 for the word mark ‘MyFactory’ (earlier mark 2)

Class 9: Computer; Components and peripherals for computers; Computer memory; Computer interface; Data processing equipment; Printers; Computer programs; on machine-readable carrier media stored documentation and manuals relating to computers or computer programs.

Class 16: Instructional and teaching material; Documentation and publications relating to computers or computer programs; Manuals; Printed matter relating to computer hardware and computer software.

Class 35: Advertising; Distribution of prospectuses; Document reproduction; Management in the field of data processing; Organization of exhibitions and trade fairs for commercial purposes and advertising purposes; Advice on organization and management of companies; Organizational consulting in business matters; Consultancy relating to business management; professional business consultancy; Personnel management consultancy

Class 38: Maintenance of computer hardware; Telecommunications; Communication by computer terminals; Emails; computerized data transmission.

Class 41: Training; Conferences; Seminars; Exhibitions; Organization and holding of conferences, symposiums and congresses.

Class 42: Creating programs for data processing; Maintenance and updating of computer software; Design of computer software; Computer consulting services; Computer systems analysis; Rental of computer software and data processing equipment.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Direct mail advertising; Arranging subscriptions to telecommunication services for others; Presentation of goods on communication media, for retail purposes; Business management and organization consultancy; Business management for freelance service providers; Computerised file management; Web site traffic optimisation; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations services; Company auditing (business analysis); The bringing together, for business purposes, of sellers and purchasers on a single interface accessible online; Providing of a database for evaluating goods and services provided online for buyers and sellers; Providing of auctioneering services; Arranging of subscriptions to a website enabling customers to order online; The bringing together, for business purposes, of professional and/or non-professional contacts, namely the creation of business contacts for the purchase, sale, exchange, rental and stock disposal of all kinds of new or second-hand industrial equipment in the fields of agrifoodstuffs, industrial building construction, electricity, chemistry, cosmetology, pharmacy, control, measuring, regulation, instrumentation, vision, dust removal, emissions protection, electronics, energy, packaging, but also in the fields of conditioning, various kinds of industrial equipment, casting, training, industrial supplies and equipment, fluid and air management, sealing, filtration, printing, logistics, building, transportation, machine tools, workshop machines, woodworking machines, maintenance, computer-aided maintenance management, and in the fields of subcontracting of services, handling, logistics, storage, lifting, conveying, computer hardware, mechatronics, automatic devices, robotics, measuring, quality control, weighing, plastics technology and rubber, metering, processes, vibratory equipment, mixing, homogenisation, dispersion, size and appearance modification, drying, separation, and in the fields of screening, hygiene, the environment, protection, personal protection equipment, cleaning, textiles, sheet metal manufacture, wine-making for professionals and individuals; Presentation of goods and services on all kinds of communications media, in particular for retailing and online sale, in particular rental of all kinds of movable property or real estate, rental of advertising space, searching for job advertisements or providing of staff; Business administration services for processing sales made on the internet; Promotion of goods for others; Price comparison services; Business consultancy and commercial information relating to sales prospecting; Management of customer accounts; business data analytics; Conducting of searches in computer files and databases on the internet and on computer networks, for others, relating to business matters and offers for industrial goods; Maintenance and compilation of data in computer databases for commercial purposes; Management and processing of computerised invoices; Presentation of goods and services on all kinds of communications media for retailing and online sale, in particular of machine tools, materials, industrial equipment, tooling, equipment for structural works, agricultural equipment, professional equipment for transport and handling, or any other equipment for use in industry.

Class 36: Financial management; Financial analysis; Financial consulting.

Class 38: Telecommunications; Information about telecommunication; Communications by computer terminals; Communications by fiber optic networks; Radio communications; Communications by telephone; Provision of on-line forums; Providing access to databases; Providing of access to databases enabling users to select and order goods online.

Class 42: Computer software design; Software development; Installation of software; Maintenance of software; Updating of computer software; Computer programming; Computer system analysis; Computer system design; Information technology [IT] consultancy; Electronic data storage; Designing, managing and monitoring online forums for discussion.

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 opponent’s list of goods and services, indicates that the specific goods and 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).

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

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 services in Class 35

Advertising; business management; business administration; office functions are identically contained in the three lists of services.

The contested services direct mail advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of publicity texts; rental of advertising space; dissemination of advertising matter; public relations services; presentation of goods and services on all kinds of communications media, in particular for retailing and online sale, in particular rental of all kinds of movable property or real estate, rental of advertising space, searching for job advertisements or providing of staff; promotion of goods for others; presentation of goods and services on all kinds of communications media for retailing and online sale, in particular of machine tools, materials, industrial equipment, tooling, equipment for structural works, agricultural equipment, professional equipment for transport and handling, or any other equipment for use in industry are all advertising related activities that are included in, or overlap with the broad category of the opponent’s advertising. Therefore, they are identical.

The contested computerised file management; maintenance and compilation of data in computer databases for commercial purposes; management and processing of computerised invoices; business administration services for processing sales made on the internet; arranging subscriptions to telecommunication services for others; arranging of subscriptions to a website enabling customers to order online are all activities related to data processing that are included or overlap with the opponent’s office functions. Therefore, they are identical.

Business management services and related consultancy are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

Examples of business management are business research and appraisals, cost-price

analyses and organisation consultancy, since they are all intended to help with the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, carry out marketing, research consumer trends, and launch new products; how to create a corporate identity, etc.

The contested business management and organization consultancy; business management for freelance service providers; web site traffic optimisation; company auditing (business analysis); the bringing together, for business purposes, of sellers and purchasers on a single interface accessible online; providing of a database for evaluating goods and services provided online for buyers and sellers; the bringing together, for business purposes, of professional and/or non-professional contacts, namely the creation of business contacts for the purchase, sale, exchange, rental and stock disposal of all kinds of new or second-hand industrial equipment in the fields of agrifoodstuffs, industrial building construction, electricity, chemistry, cosmetology, pharmacy, control, measuring, regulation, instrumentation, vision, dust removal, emissions protection, electronics, energy, packaging, but also in the fields of conditioning, various kinds of industrial equipment, casting, training, industrial supplies and equipment, fluid and air management, sealing, filtration, printing, logistics, building, transportation, machine tools, workshop machines, woodworking machines, maintenance, computer-aided maintenance management, and in the fields of subcontracting of services, handling, logistics, storage, lifting, conveying, computer hardware, mechatronics, automatic devices, robotics, measuring, quality control, weighing, plastics technology and rubber, metering, processes, vibratory equipment, mixing, homogenisation, dispersion, size and appearance modification, drying, separation, and in the fields of screening, hygiene, the environment, protection, personal protection equipment, cleaning, textiles, sheet metal manufacture, wine-making for professionals and individuals; price comparison services; business consultancy and commercial information relating to sales prospecting; management of customer accounts; business data analytics; conducting of searches in computer files and databases on the internet and on computer networks, for others, relating to business matters and offers for industrial goods are services aimed to help companies to manage their business. Therefore, it is considered that these services are at least  similar to the opponent’s business management as they are provided by the same companies specialized in business management and related consultancy, target the same relevant public and use the same distribution channels.

The opponent’s goods and services include computer software and hardware in class 9, instructional and teaching material in Class 16, advertising, business management, business administration and office functions in class 35, telecommunications and computer maintenance in class 38, training and conferences in Class 41 and scientific and IT services in class 42.

The contested providing of auctioneering services are dissimilar to all the opponent’s goods and services. Even though they may be offered to the same professional consumers, they differ in their nature, purpose and method of use. They are not in competition not complementary to each other.

Contested services in Class 36

The contested financial management; financial analysis; financial consulting refer to services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds.

These services have no points in common with the opponent’s goods and services in Classes 9, 16, 35, 38, 41 and 42 described above. There is a fundamental difference in the nature and purpose. Moreover, the opponent’s services are provided by specialised companies. They neither target the same public nor move through the same distribution channels. Furthermore, there is no complementarity or interchangeability either. For the sake of completeness, as regards the opponent’s business management services in Class 35 and the specific IT services in Classes 38 and 42, although the financial companies often provide advice relating to financial services, they do not provide business management advice or develop software. Companies who handle other's investments (e.g. a bank, or investment fund or pension fund) operate on a different field of business than business management or IT consultants.

Therefore it is considered that the contested financial management; financial analysis; financial consulting are dissimilar to all the opponent’s goods and services.

Contested services in Class 38

Telecommunications is identically contained in the lists of services.

The contested information about telecommunication; communications by computer terminals; communications by fiber optic networks; radio communications; communications by telephone; provision of on-line forums; providing access to databases; providing of access to databases enabling users to select and order goods online are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

Computer software design; maintenance of software; updating of computer software; electronic data storage are identically contained in the lists of services (despite minor differences in their wording).

The contested  software development; installation of software; computer programming; computer system analysis; computer system design; designing, managing and monitoring online forums for discussion  overlap with the opponent’s creating, development, design and maintenance of computer programs, computer software and software platforms for businesses in particular featuring office groupware, enterprise resource planning (ERP), production planning (PPS), customer relationship management (CRM), business to business (B2B) and business to consumer (B2C) ecommerce, accounting and financial management systems (FMS), human resources management (HRM), management information systems (MIS), business intelligence (BI), data mining (DM), predictive analytics (PA) and artificial intelligence (AI). Therefore they are identical.

The contested information technology [IT] consultancy overlaps with the opponent’s computer consulting 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the fields of business management, business consultancy, telecommunications and IT.

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

3. The signs

myfactory (Earlier mark 1) MyFactory (Earlier mark 2)
Earlier trade marks	Contested sign

The relevant territories are Germany and 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.

As the relevant services are mainly directed at professionals with specific professional knowledge or expertise in the fields of business management, business consultancy, telecommunications and IT, in view of the Opposition Division, the German relevant public will understand the meaning of the English common vocabulary of the verbal elements ‘MyFactory’ and ‘MyFactoryPlace’.

Therefore, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the earlier mark is meaningful, such as the German professional public.

Both earlier marks are word marks. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Therefore, they will be jointly referred as ‘the earlier mark’.

Although the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The relevant public will perceive ‘My’ as the English possessive preposition indicating belonging and ‘Factory’ as the industrial plant or complex where the services are designed and/or created. Consequently, the earlier mark is considered of limited distinctiveness for the relevant services since it will be perceived as indicating that the origin/place of the consumer’s services is a factory. In view of what has been stated above about the role of the word ‘My’ and since it forms one conceptual unit with the word ‘Factory’, none of these elements can be considered more distinctive than the other.

The same reasoning applies for the verbal element ‘MyFactoryPlace’ in blue letters in the contested sign. Although as a whole is meaningless, the relevant public will dissect the words with a concrete meaning and will consequently also perceive the meaning of ‘My Factory Place’ as indicating that the origin/place of the consumer’s services is a factory and therefore with a limited distinctiveness.

The figurative fanciful device at the beginning of the contested mark, which is distinctive, and the verbal element ‘MyFactoryPlace’, are the dominants ones due to their size and position. 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 additional verbal element ‘Achetez – Vendez – louez – Déstockez’ is meaningless for the relevant public and therefore distinctive to an average degree. However it will have a very limited impact on the overall impression of the contested sign due to its very small size and place at the bottom.

A negligible element refers to an element that due to its size and position is not noticeable at first sight or is part of a complex sign. In the contested sign, the verbal element placed at the bottom ‘Vos équipements industrielles d’occasion, produits et stocks non utilisés’ is barely perceptible. As it is likely to be disregarded by the relevant public, it will not be taken into consideration.

Visually, the signs coincide in the verbal element ‘MyFactory*****’. However, they differ in the typeface, the figurative fanciful element and the additional less dominant verbal element ‘Achetez – Vendez – louez – Déstockez’, all in the contested sign. The earlier mark is fully reproduced at the beginning of the co-dominant verbal element of the contested sign. Furthermore, 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.

Therefore, and taking into account what has been said about the distinctiveness of the elements and components of the signs and their dominant positions within the signs (where applicable), the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘MyFactory’, constituting the sole element of the earlier mark and present at the beginning of the verbal element ‘MyFactoryPlace’ of the contested sign which, for the reasons outlined above, is the element where the relevant public will attach the most importance. The pronunciation differs in the sound of the word ‘Place’ in this verbal element of the contested sign.

As regards the additional words ‘Achetez – Vendez – louez – Déstockez’, they have secondary positions within the contested sign. Therefore, taking into account that the additional expressions have secondary positions within the contested sign and that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLRG5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), it is highly probable that a significant proportion of the relevant consumers will omit the additional expressions ‘Achetez – Vendez – louez – Déstockez’ when referring to the contested sign.

Therefore, the signs must be considered to be aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs refer to a similar concept indicating that the origin/place of the consumer’s services are a factory, the signs are conceptually highly similar. The additional, distinctive, verbal element of the contested sign has no meaning for the part of the public under analysis and can thus not influence the assessment of the conceptual similarity of the signs. Furthermore, the figurative element of the contested sign is a fanciful depiction with no meaning.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.

5. 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. 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).

As concluded above, the contested services are partly identical, partly similar and partly dissimilar to the opponent’s services and the public’s degree of attention varies from average to high. The signs in conflict are visually similar to an average degree, aurally at least similar to an average degree and conceptually highly similar.

The earlier mark is weak, which allows it a limited scope of protection. However, the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a sufficient degree of similarity between the signs and between the goods or services covered.

In the present case, the similarities between the signs are due to the fact that they coincide in the sole verbal element of the earlier mark, ‘MyFactory’, which also forms the beginning of the co-dominant element of the contested sign that is the one that will catch the attention of consumers. Admittedly, there are differences between the signs that will not go unnoticed. However, these differences are not sufficient to counteract the similarities as their impact in the present case is not such as to enable the part of the public under analysis to safely distinguish between them.

Account must be 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).

In an overall assessment of the relevant factors of the case, it is concluded that the differences identified between the signs are clearly insufficient to enable the relevant public, including when the degree of attention is enhanced, to safely distinguish between the signs. 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 its arguments, the applicant states that the area of activity of the contested sign does not compete with the areas of activity of the earlier trade marks invoked by the opponent. In particular, the applicant claims that the opponent specializes in the IT industry for clients looking for a software solution for enterprise resource planning. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and the case‑law cited therein). Therefore, the arguments raised by the applicant are irrelevant.

The applicant also argues that case law has traditionally held that in the presence of weakly distinctive word elements, the consumer will focus on the figurative elements. Thus, when the common element is weakly distinctive, its recovery will not suffice to characterize a risk of confusion and refers to cases providing only the signs under comparison, without any reference to the case number. However, in view of the Opposition Division, the previous cases referred to by the opponent are not relevant to the present proceedings as the case reference was not submitted and therefore there is not enough information on the factual/legal background so the Opposition Division is not in a position to understand/comment the reasons behind the decision. Therefore, the argument is to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German professional public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 964 324 for the word mark ‘myfactory’ and German trade mark registration No 30 016 221 for the word mark ‘MyFactory’. 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 services found to be identical or similar to those of the earlier trade marks.

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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Ana BAKALARZ

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.