OPPOSITION No B 2 910 118

IplusD Innova S.A., Passeig Circumval.lació, 8, 08003 Barcelona, Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Fortia Financial Solutions, 68 Rue du Faubourg Saint Honoré, 75008 Paris, France (applicant), represented by Cabinet Beau de Lomenie, 158 rue de L'Université, 75340 Paris Cédex 07, France (professional representative).

On 06/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 118 is upheld for all the contested goods and services, namely

Class 9: Data-processing equipment and computers; Computer software; Recorded content; Computer software; Computer databases; Media content; Navigation, guidance, tracking, targeting and map making devices; none being for use in connection with monitoring, tracking or diagnosing automotive vehicles.

Class 42: Design, development and preparation of computer software; Installation, maintenance and repair of software; IT services; Software development, programming and implementation; Hosting of software as a service; Conversion and digitalisation of documents and data into electronic form; Hosting of computer data; Conversion of data and computer programs for use in electronic archiving; Conversion of data or documents from physical to electronic media; Software research and development; Consultancy in the field of computing; Technical consultancy services relating to information technology; Design (development) of computer goods, namely computer programs and software; Computer system design; Cloud computing; Design, setup, maintenance and hosting of websites; Computer security to prevent piracy and data deterioration; Expert services, namely technical testing of computer hardware and software and telecommunications networks; Programming, development and engineering in the field of computing; Programming of operating software for accessing and using a cloud computing network; Monitoring of data, signals and information processed by computers or by telecommunications apparatus and instruments; Creation and installation of computer databases; software technical assistance; the aforementioned not including any services provided in relation to monitoring, tracking or diagnosing automotive vehicles.

2. European Union trade mark application No 16 340 812 is rejected for all the contested goods and services. It may proceed for the remaining services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 340 812 (figurative mark: ), namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 9 225 004 (figurative mark: ). 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 in its observations on 27/12/2017 that the opponent submit proof of use for the trade mark on which the opposition is based.

The applicant did not submit the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 the following:

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical engineering reports.

The contested goods and services, after the limitation requested by the applicant on 24/07/2017, are the following:

Class 9: Data-processing equipment and computers; Computer software; Recorded content; Computer software; Computer databases; Media content; Navigation, guidance, tracking, targeting and map making devices; none being for use in connection with monitoring, tracking or diagnosing automotive vehicles.

Class 42: Design, development and preparation of computer software; Installation, maintenance and repair of software; IT services; Software development, programming and implementation; Hosting of software as a service; Conversion and digitalisation of documents and data into electronic form; Hosting of computer data; Conversion of data and computer programs for use in electronic archiving; Conversion of data or documents from physical to electronic media; Software research and development; Consultancy in the field of computing; Technical consultancy services relating to information technology; Design (development) of computer goods, namely computer programs and software; Computer system design; Cloud computing; Design, setup, maintenance and hosting of websites; Computer security to prevent piracy and data deterioration; Expert services, namely technical testing of computer hardware and software and telecommunications networks; Programming, development and engineering in the field of computing; Programming of operating software for accessing and using a cloud computing network; Monitoring of data, signals and information processed by computers or by telecommunications apparatus and instruments; Creation and installation of computer databases; software technical assistance; the aforementioned not including any services provided in relation to monitoring, tracking or diagnosing automotive vehicles.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of 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 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 goods in Class 9

The contested computer software; not being for use in connection with monitoring, tracking or diagnosing automotive vehicles (mentioned twice) is similar to the opponent’s design and development of computer software. These goods and services are complementary and may coincide in relevant pubic and in producers/providers.

The contested recorded content; media content; computer databases; none being for use in connection with monitoring, tracking or diagnosing automotive vehicles include or overlap with computer software and are similar to the opponent’s design and development of computer software for the same reasons mentioned above.

The contested data-processing equipment and computers; none being for use in connection with monitoring, tracking or diagnosing automotive vehicles are similar to the opponent’s design and development of computer software. These goods and services can be complementary. They may be via the same distribution channel and relevant consumers and/or producers/providers may coincide.

Navigation, guidance, tracking, targeting and map making devices; none being for use in connection with monitoring, tracking or diagnosing automotive vehicles given that they are data processing equipment are similar to the earlier design and development of computer software for the same reasons given above.

Contested services in Class 42

The contested design, development and preparation of computer software; installation, maintenance and repair of software; it services; software development, programming and implementation; hosting of software as a service; conversion and digitalisation of documents and data into electronic form; hosting of computer data; conversion of data and computer programs for use in electronic archiving; conversion of data or documents from physical to electronic media; software research and development; consultancy in the field of computing; technical consultancy services relating to information technology; design (development) of computer goods, namely computer programs and software; computer system design; cloud computing; design, setup, maintenance and hosting of websites; computer security to prevent piracy and data deterioration; expert services, namely technical testing of computer hardware and software and telecommunications networks; programming, development and engineering in the field of computing; programming of operating software for accessing and using a cloud computing network; monitoring of data, signals and information processed by computers or by telecommunications apparatus and instruments; creation and installation of computer databases; software technical assistance; the aforementioned not including any services provided in relation to monitoring, tracking or diagnosing automotive vehicles are included in, or overlap with the broad category of the opponent’s technological services and design relating thereto. 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 goods and services found to be identical or similar are directed at business customers with specific professional knowledge or expertise and at the public at large.

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

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 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 common element ‘INNOVA’ is meaningful in certain territories, for example in those countries where Spanish is understood it means ‘innovate’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public such as Greece and Cyprus where it would be meaningless and distinctive and where the likelihood of confusion is greatest.

The earlier mark is a figurative mark with the verbal elements ‘IPLUSD INNOVA Gestión de Proyectos de Innovación’. None of the verbal elements have any meaning for the Greek-speaking relevant public. Therefore, they are distinctive. ‘IPLUSD’ appears in a large capital blue basic typeface, below which appears ‘INNOVA’, in the same capital typeface in grey. Underneath in a much smaller font appears the words ‘Gestión de Proyectos de Innovación’. This element is visually inferior and less dominant than the others. To the left appears a circular figurative device that merges from dark grey to blue. This device has no meaning in relation to the services in question and so is a distinctive element.

The contested sign is a figurative mark with the verbal elements ‘Innova Software’. ‘Innova’, meaningless and distinctive, is the dominant verbal element and appears with a capital ‘I’ in a large standard dark blue typeface. Underneath and aligned to the left, in a much smaller green typeface with a capital ‘S’, appears the word ‘Software’ which is the less dominant (visually outstanding) than the other elements. To the left is a blue and green figurative device which has no meaning regarding the goods and services and so is distinctive.

‘Software’ is widely used in the market place and is used by Greek-speakers. It will be associated with ‘programs and other operating information used by a computer’ and it is non-distinctive for the goods and services in question. (06/03/2014 – R 1059/2013‑1 – GATEWIT / WIT SOFTWARE (fig. mark)).

As pointed out by the opponent, 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).

Visually, the signs coincide in the distinctive verbal element ‘INNOVA’, the dominant verbal element of the contested sign and one of the main verbal elements of the earlier mark. They coincide also in the use of the colour blue. However, the signs differ in the remaining distinctive verbal elements of earlier mark and the remaining weak verbal element of the contested sign. They differ also in the typefaces, the other colours and in the distinctive figurative devices. The signs have a similar visual structure with a figurative device to the left and the verbal elements on the right including a smaller tagline underneath.

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

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛INNOVA’, present identically in both signs. The pronunciation differs in the sound of the distinctive element ‘IPLUSD’ of the earlier mark and the non-distinctive element ‘Software’ of the contested sign. It is unlikely that the smaller verbal elements of the earlier mark ‘Gestión de Proyectos de Innovación’ be pronounced at all, given their size and position.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘Software’ will evoke a concept, it is not sufficient to establish any conceptual dissimilarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements and figurative devices, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, ‘Sabèl’, EU:C:1997:528, § 24; 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 the present case the goods and services are partly identical and partly similar. The signs are visually similar to a below average degree and aurally similar to an average degree, the conceptual aspect not influencing the similarity of the signs. The attention of the relevant public varies from average to higher than average and the earlier mark has a normal degree of distinctive character.

The signs coincide in the distinctive and dominant verbal element of the contested signs which is included in its entirety in the earlier mark as one of the main distinctive verbal elements. This is where the consumers’ attention will focus given that the verbal elements, as mentioned, have a greater impact on consumers than figurative components. The differences between the signs, including the additional distinctive verbal elements of the earlier mark and the distinctive figurative devices, are not sufficient to exclude a likelihood of confusion among the relevant public, both professional and general, regardless of the degree of attention.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The similar visual structure of the signs as mentioned above and coincidence in the colour blue make this possibility all the more likely.

The applicant argues that the common verbal element ‘INNOVA’ has a low degree of distinctive character due to its similarity to the word ‘innovation’. However, as ‘INNOVA’ has no meaning and is distinctive for the Greek-speakers upon whose perception this decision is based, these arguments must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Considering all the above, there is a likelihood of confusion on the part of the Greek-speaking part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 225 004.

It follows that the contested trade mark must be rejected for all the contested goods and 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.

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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Octavio MONGE GONZALVO

Lynn BURTCHAELL

Aliki SPANDAGOU

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.