OPPOSITION No B 2 943 028

Inteligencia Sistematica, S.L., Calle Caleruega nº 74, 28033 Madrid, Spain (opponent), represented by J. Lahidalga, Calle Arturo Soria, 243 Dpl. Esc. 4-1º Izd., 28033 Madrid, Spain (professional representative)

a g a i n s t

Insys Microelectronics GmbH, Hermann-Köhl-Str. 22, 93049 Regensburg, Germany (applicant), represented by Hannke Bittner & Partner Patent- Und Rechtsanwälte MBB, Prüfeninger Straße 1, 93049 Regensburg, Germany (professional representative)

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 943 028 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 362 006 is rejected in its entirety.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods and services of European Union trade mark application No 16 362 006 for the word mark ‘INSYS icom Connectivity Suite’. The opposition is based on Spanish trade mark registration No 2 738 547 for the word mark ‘InSis4’. The opponent invoked Article 8(1)(a) and 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.

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: Design, development and implementation of software.

The contested goods and services are the following:

Class 9: Computers, Computer operating programs, Computer programs (recorded, downloadable software), computer software, recorded, Data processing apparatus, Interfaces (for computers), Memories for data processing equipment.

Class 38: Providing of access to a global computer network, providing of access to computer programs on data networks, providing of access to information on the internet, communications by computer terminals, computer-aided transmission of messages and images, telecommunications, telecommunications via internet platforms and portals, message sending, providing access to databases.

Class 42: Providing of information in relation to computer technology and programming via a website, providing of IT infrastructures and IT services, in particular memory space, computing power or application software via a computer network, computer software design, computer systems design, engineering, electronic data storage, creation of data processing programs, monitoring of computer systems by remote access, conversion of computer programs and data, software as a service (SaaS), rental of computer software, rental of data processing equipment.

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 computers, computer operating programs, computer programs (recorded, downloadable software), computer software, recorded, data processing apparatus, interfaces (for computers), memories for data processing equipment are similar to the opponent’s design and implementation of software in Class 42. In spite of the fact that the nature of the goods and services is not the same, they usually coincide in producer/provider, relevant public and distribution channels. Furthermore, they are goods and services that are complementary.

Contested services in Class 38

The contested providing of access to a global computer network, providing of access to computer programs on data networks, providing of access to information on the internet, communications by computer terminals, computer-aided transmission of messages and images, telecommunications, telecommunications via internet platforms and portals, message sending, providing access to databases are at least similar to the opponent’s design and implementation of software in Class 42. Cleary, there is a link between computer programming and telecommunication services, since software related services must be in place to successfully support telecommunication activities. Therefore, they coincide in their public and distribution channels and, in addition, they have a complementary character.

Contested services in Class 42

The contested providing of information in relation to computer technology and programming via a website, providing of IT infrastructures and IT services, in particular memory space, computing power or application software via a computer network, computer software design, computer systems design, engineering, electronic data storage, creation of data processing programs, monitoring of computer systems by remote access, conversion of computer programs and data, software as a service (SaaS), rental of computer software, rental of data processing equipment are at least similar to the opponent’s design and implementation of software in Class 42. The provision of information related to IT specialized matters is connected to those IT services of the opponent and can therefore have the same providers and distribution channels and target the same relevant public.

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 similar or at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention is considered to be average.

3. The signs

InSis4	INSYS icom Connectivity Suite
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs are word marks. The earlier trade mark consists of just one alphanumeric element whereas the contested sign is composed of four words. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, the words as such are protected, not their written form, being irrelevant whether the word marks are depicted in lower or upper case letters.

It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The expressions ‘InSis4’ and ‘INSYS icom Connectivity Suite’, considered as a whole, have no clear univocal meaning for the relevant public at issue. Furthermore, considering the aforementioned principle, it is highly unlikely that the relevant Spanish-speaking public in question (average consumers) will perceive the element ‘icom’ of the contested sign as the conjunction of the words ‘i’ and ‘com’.

The nearly identical terms contained in both signs, ‘InSis’ and ‘INSYS’, with the only divergent character stressed in the letters ‘i’ and ‘Y’, which are indeed closely related letters, will not be understood by the relevant public as they do not convey any conceptual meaning.

It must be noted that the initial expression ‘InSis’ / ‘INSYS’ of the signs under comparison is normally distinctive as a whole, as it creates a formulation with no clear meaning. Furthermore, due to its initial position in both signs, it is likely to be the element to which the consumers afford the most trade mark significance in the marks, and which will be used to refer to them.

The single number ‘4’, contained in the earlier mark, has less impact as a trade mark indicator because it must be pointed out that it is common to use numbers with brands as an identifier of the corresponding technological version. It does not coincide a 100% with the expression used as Industry ‘4.0’, but it is an indirect reference to the same one, i.e. ‘the reference indication is customary for software products and refers to a new version when extensive changes have been made, whereby the first number increases by one and, at the same time, the second number goes back to zero’ (Decision of 26/07/2016, R 640/2016-4, tube 4.0, §13). Therefore, in the current scenario, this element has no direct reference to the meaning of the relevant services in Class 42. At most, it is an allusive or indirect indication and, therefore, its distinctiveness is reduced in relation to the opponent’s services.

Likewise, the expression ‘icom Connectivity Suite’, as a whole, contained in the contested sign, is distinctive in relation to the relevant goods in Class 9 and services in Classes 38 and 42. The term ‘icom’ has no meaning for the relevant public. However, the word ‘Connectivity’, will be associated by the relevant public with ‘the ability of a computing device to connect to other computers or to the internet’, due to its proximity to the Spanish equivalent term: ‘conectividad’. Thus, this concept is weak with respect to all the goods and services at issue and, consequently, it is considered inherently weakly distinctive. In addition, even though the word ‘Suite’ will be understood as meaning ‘suite’ (a deluxe room of a hotel, with several dependencies), the concept is completely unrelated to the goods and services concerned and, therefore, the expression remains distinctive. Such meaning is supported with the dictionary definition and corresponding translation listed below.

CONNECTIVITY: ‘Conectividad’ (translation from Spanish to English extracted from Reverso Dictionary on 27/07/2018 at http://www.reverso.net/
translationresults.aspx?lang=EN&direction=english-spanish)

SUITE ‘Habitación de lujo de un hotel, con varias dependencias’ (information extracted from RAE Dictionary on 27/07/2018 at http://dle.rae.es/?id=BsM9P0S|BsNR3r2)

SUITE: ‘Suite’ (translation from Spanish to English extracted from Reverso Dictionary on 27/07/2018 at http://www.reverso.net/translationresults.aspx?
lang=EN&direction=spanish-english)

The Opposition Division is of the opinion that although the second parts of both signs ‘4’ and ‘icom Connectivity Suite’ constitute a substantial part of the same ones, and these parts will not be understood by the relevant public as they convey no clear concept, as a whole, in relation to the goods and services, they will also have a limited impact on the overall impression conveyed by the sings. Particularly, because the public is likely to focus more on the initial elements of the marks, ‘InSis’ / ‘INSYS’, as they are placed in the most conspicuous part of the signs and will be afforded by consumers with the most the trade mark significance.

As word marks the signs have no dominant (visually eye-catching) elements.

Visually, both signs differ in the number and sequence of letters/characters. The contested sign is quite long in size (26 letters: ‘INSYS icom Connectivity Suite’) while the earlier sign, in contrast, is fairly short (5 letters + 1 number: ‘InSis4’). The signs coincide almost entirely in their initial elements: i.e. ‘InS(i)s’ / ‘INS(Y)S’. The letters ‘i’ and ‘Y’ located in the fourth position of the initial element are not identical, but closely related as their writings are quite similar to each other, especially when one considers upper case depiction, ‘I’ and ‘Y’. The additional element of the earlier mark, ‘4’, and those of the contested sign, ‘icom Connectivity Suite’, are visually secondary to the leading elements ‘InS(i)s’ / ‘INS(Y)S’ since, as explained above, the initial part of word marks has a stronger impact for the public as an indicator of commercial origin. In addition, the word ‘Connectivity’, although relatively long, has a limited impact on consumers’ perception, considering its weak distinctive character.

Therefore, the public will focus in the near-identity of the initial and fully distinctive verbal elements of the marks.

Nonetheless, taking into consideration their differing components and lengths, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the first elements of the signs is identical, as the letter ‘Y’ functions as the vowel ‘I’ in terms of pronunciation. Therefore, both signs phonetically coincide in the pronunciation of their initial elements ‘InSis’ / ‘INSYS’, which will be clearly singled out aurally in both signs. They differ in the additional elements of the earlier mark, ‘4’, and of the contested sign, ‘icom Connectivity Suite’. As explained above, the position of these differing elements is somewhat secondary, when compared to the coinciding element of the signs; and they may be perceived as an indication of a product version (in the earlier mark) or as supplementary indications referring to a name of a new model, a new technical characteristic having to do with connectivity, etc. (in the contested sign). In addition, the word ‘Connectivity’, although relatively long, has a limited impact on consumers’ perception, considering its weak distinctive character. Therefore, due to the placement of the distinctive elements ‘InSis’ and ‘INSYS’ at the beginning of the marks, the public will afford the most trade mark significance to them.

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

Conceptually, the differentiating elements (‘4’ / ‘Connectivity Suite’) convey the concepts indicated above, whereas the remaining elements of the signs convey no concept. Therefore, the signs are not conceptually similar, to the extent that their elements will be associated with different meanings.

Nonetheless, this conceptual difference has a limited impact on the overall impression conveyed by the signs, in particular when it comes to the element ‘Connectivity’ which distinctive character is weak. Moreover, the public will rather focus on meaningless elements located at the beginning of the signs, which in addition are nearly identical elements, ‘InSis’ / ‘INSYS’.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the 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.

5. Global assessment, other arguments and conclusion

The contested goods and services are similar or at least similar to the services covered by earlier Spanish trade mark registration No 2 738 547.

The signs are visually and aurally similar to an average degree and conceptually not similar, as explained in section c) above. Nonetheless, this conceptual difference has a limited impact on the overall impression conveyed by the signs, as it is due to the elements ‘4’ and ‘Connectivity Suite’, which are located in a secondary position in the signs and are likely to be perceived as supplementary indications of a new version or a name of a new model of products designated primarily with the elements ‘InSis’ and ‘INSYS’ respectively.

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 and 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

It should also be noted that the nearly identical expression ‘InSis’ / ‘INSYS’ is considered distinctive as a whole and that, as a result of this, the earlier mark enjoys an overall average inherent distinctiveness.

Although the signs display noticeable differences, these differences will have a lesser impact for the relevant consumers than the coincidence in their distinctive initial expressions ‘InSis’ / ‘INSYS’. Moreover, the element ‘Connectivity’ has only limited impact on consumers’ perception, bearing in mind its weak distinctive character.

Therefore, given the almost complete reproduction of the distinctive and initial element ‘InSis’, in the contested sign, as ‘INSYS’ (which is aurally identical and visually highly similar), with the addition of the wording ‘icom Connectivity Suite’ at the end, it is likely that a considerable part of the relevant public at issue (average consumers) displaying an average level of attention will at least associate the contested sign with the earlier mark.

In word signs, the first part is usually the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the overall impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; and 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may be led to believe, on account of nearly identical beginning, that the contested sign is a new variation or brand line of goods and services, as it is a normal market practice for producers to introduce new versions of brands, while preserving the same or similar ‘house’ brand.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding and nearly identical initial elements, ‘InSis’ / ‘INSYS’, and that there is a likelihood of confusion, including a likelihood of association, with the earlier trade mark, on the part of the Spanish-speaking part of the public composed of average consumers. 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, composed of professionals.

Therefore, the opposition is well-founded on the basis of the opponent’s Spanish trade mark registration No 2 738 547. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.

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

Gueorgui IVANOV

María Luisa ARANDA SALES

Jakub MROZOWSKI

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.