OPPOSITION No B 2 912 452

Aegis Trademarks BV, Moermanskkade 85, 1013 BC Amsterdam, Netherlands (opponent), represented by CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St, London, EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Fujitsu Limited, 1-1 Kamikodanaka, 4-chome Nakahara-ku, Kawasaki-shi, 211-8588 Kanagawa-ken, Japan (applicant), represented by Gleiss Große Schrell und Partner mbB, Leitzstr. 45, 70469 Stuttgart, Germany (professional representative).

On 06/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 912 452 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 408 122 for the word mark ‘M12’, namely against all the services in Class 42. The opposition is based on European Union trade mark registrations No 16 175 531 for the word mark ‘M1’ and No 16 176 018 for the figurative mark . 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.

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 16 175 531.

1. The services

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

Class 42: Computer network services; computer programming services; computer network management services for others; computer systems analysis, design, and integration; computer software application development and hosting; computer consulting regarding website development; design of graphic user interface and site architecture technology integration to enable e-commerce and integration with client databases; database development; computer system design and development, technical automation services regarding applications for wide area network or local area network computer systems; technical services with regard to computer programs; computer systems management (with the exception of installation, repair and maintenance); support in the use of computer networks; technical consulting in the field of computers; computer system development with regard to opinion polls and marketing studies; design of data processing programs; design, development and research in using computer databases, manuals and in systematizing information in files; graphic design services; web site design; creation, editing and updating of website content; research and design of new products and packaging; creating blogs, apps and games for advertising purposes; information, advisory and consultancy services relating to the aforesaid services.

The contested services are the following:

Class 42: Computer programming services; computer rental services; design, development, preparation, installation, maintenance and update of computer software programs; computer system consulting and computer advisory services; provision of temporary non-downloadable software; software as a service (SaaS) services; operating of cloud computing systems.

Some of the contested services are identical to services on which the opposition is based (e.g. computer programming services, which are identically contained in both lists of services). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large, as well as at business customers with specific professional knowledge or expertise, such as those looking for IT solutions to improve their businesses.

The degree of attention may therefore vary from average to higher than average, depending on the specialised nature and application of the services, as well as on their price and their terms and conditions.

3. The signs

M1	M12
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).

Both signs are word marks. The earlier mark consists of the letter ‘M’ followed by the number ‘1’, whereas the contested sign consists of the letter ‘M’ followed by the number ‘12’.

The Opposition Division notes that the General Court has stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). However, account is taken of the fact that a single letter is the most elementary unit of language, and the overall impression it conveys depends to a great extent on the graphical depiction of the letter; in the overall impressions produced by the signs, small differences may prevail over the similarities. Taking this into account, the distinctiveness of the elements in the present case depends largely on the particular combinations of letters and numbers. As the elements ‘M1’ of the earlier mark and ‘M12’ of the contested sign have no direct and clear meaning in relation to the relevant services, they can be considered distinctive.

Visually, the signs coincide in their first letter, ‘M’, and in the number ‘1’. They differ in the presence in the contested sign of the number ‘2’, which has no counterpart in the earlier mark.

The opponent emphasises the importance of the coinciding letter ‘M’ and number ‘1’ at the beginning of the contested sign. However, in the present case, the length of the signs has an influence on the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements, as correctly pointed out by the applicant. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the light of the foregoing, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘M’, present identically in both signs. The pronunciation differs in the sounds of the numbers, namely ‘1’ in the earlier mark and ‘12’ in the contested sign.

The coinciding letter ‘M’ will be pronounced identically as a syllable or two syllables, while the endings of the signs may differ significantly depending on the relevant language. In English and Spanish, for example, there is no difference in the number of syllables (i.e. /ɛm wʌn/ versus /ɛm twelv/; /ɛ-me u-no/ versus /ɛ-me ðo-θe/), whereas in Italian, for instance, there is an additional syllable at the end of the contested sign (i.e. /èm-me ù-no/ versus /èm-me dó-di-ci/). In any case, the number in the contested sign sounds very different from the number in the earlier mark.

Bearing in mind the foregoing, the signs are aurally similar to a very low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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.

According to the opponent, the earlier trade mark has a ‘reputation in the United Kingdom and Ireland including in relation to the technology enabled marketing services’. It further states that the mark ‘M1’ ‘has an enhanced level of distinctiveness generated through use of the mark’, concluding that it ‘is well known in the marketplace’.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Annex A: a witness statement, dated 02/01/2018, by Timothy Kiser, employed by Merkle Inc since 2015, and acting in his capacity as Assistant General Counsel. Mr Kiser indicates that the ‘M1 brand’ was first adopted in 2015. He also indicates that the opponent’s group (including subsidiaries and affiliates) has ‘a significant trade mark portfolio, encompassing over 50 applications and registrations, protecting the “M1” mark for a wide range of advertising and related services … in over 40 countries’. He refers to several exhibits (TK-1 to TK-9) to support his statements.

• Exhibit TK-1: a screenshot of the opponent’s website www.merkleinc.com, undated. There is no reference to the mark ‘M1’ in this item of evidence.

• Exhibit TK-2: a printout of an ‘About’ web page, showing its source to be the Internet Archive website (Mr Kiser, in his statement, indicates that this is the home page of the archive website WayBack Machine, owned by Internet Archive, and that it describes how the WayBack Machine functions). There is no reference to the mark ‘M1’.

• Exhibit TK-3: screenshots from the opponent’s website www.merkleinc.com, bearing the date 23/06/2016, relating to the ‘MerkleONE’ solution ‘for people-based marketing’. In these screenshots, two references to ‘M1’ can be seen, as well as a reference to the mark (also depicted in white against an orange background). Although the printouts are in English, neither the geographical reach of nor the target public for this information is clear.

• Exhibit TK-4: a breakdown of European web traffic for the opponent’s website www.merkleinc.com, during the period from 24/01/2017 to 23/02/2017, ranging from 1 020 ‘sessions’ from eastern Europe to 5 395 from northern Europe (there were 9 424 sessions in total; however, it is not clear how many of the sessions in northern Europe, for instance, were from EU countries). There is no reference in this item of evidence to the mark ‘M1’ or the relevant services.

• Exhibit TK-5: a printout of an article from https://addexchanger.com (a website that, according to Mr Kiser, ‘enjoys 223,000 monthly unique visitors and whose newsletter has 28,000 subscribers’) including a reference to a podcast entitled ‘Merkle’s Data Worldview’, dated 06/04/2017. The article briefly refers to ‘M1’ products.

• Exhibits TK-6 to TK-9: articles and other materials featuring references to awards won by ‘Merkle│Periscopix’ mainly in the UK, namely:

• UK Agency Awards: Biddable Media Agency of the Year (2017).

• UK Biddable Media Awards: Biddable Team of the Year (2017).

• European Search Awards: Best Use of Search — Finance (2016).

• eCommerce Awards (2016): Best Banking, Insurance & Financial Services eCommerce — Endsleigh; Best Clothes, Shoes & Fashion eCommerce — Karen Millen; Best Mcommerce Campaign — Oasis.

None of these items of evidence makes reference to the mark ‘M1’. On the contrary, they all refer to ‘Merkle│Periscopix’ and/or its team.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark ‘M1’ has acquired a high degree of distinctiveness through its use in the European Union.

The witness statement and the supporting exhibits, mostly printouts from the opponent’s website or items not related to the mark in question, are clearly not sufficient to demonstrate that the mark has acquired enhanced distinctiveness, bearing in mind that evidence that emanates from the opponent needs to be supported by other evidence from independent sources.

The evidence submitted contains very little information on marketing or promotional efforts (essentially Exhibit TK-5, which provides only very limited information in this regard). It does not contain any data about the market share held by the mark, how intensive the use of the mark has been, the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from a particular undertaking, or statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20). Although Exhibit TK-4 provides information about the geographical scope of (unclear) services and also provides some figures regarding the relevant consumers, this information cannot be considered conclusive. It does not refer to the competitive market in the relevant territory (no market share figures are presented) and the Opposition Division cannot rely on this sole source in reaching a conclusion on whether or not the mark in question is widely recognised in the European Union. Furthermore, as mentioned above, the other external sources of information, Exhibits TK-6 to TK-9, make no reference to the mark ‘M1’ but, rather, relate to the company ‘Merkle│Periscopix’.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services are assumed to be identical. The degree of attention may vary from average to higher than average.

The earlier mark enjoys an average degree of distinctiveness. The signs are visually similar to a low degree and aurally similar to a very low degree. No conceptual comparison can be made, and, therefore, this aspect has no impact on the assessment of likelihood of confusion.

The signs are both short marks; the earlier mark is made up of a letter and a number and the contested sign is made up of the same letter and another number. The fact that they differ in one digit is a relevant factor to consider when evaluating the similarity between the signs. In short signs, the public easily perceives all the individual components and is less likely to overlook any differences, as explained above (08/07/2009, T‑240/08, Oli, EU:T:2009:258, § 46 to 48; 23/09/2009, T‑391/06, S-HE, EU:T:2009:348, § 41). Furthermore, the differing number in the contested sign introduces both a noticeable visual difference and a significant aural difference.

The opponent argues that numbers can be used to ‘differentiate related/advanced products and services in the IT field’ (e.g. models, variations or sequences of the same products), and thus the signs could be perceived as ‘related services or businesses’. However, the Opposition Division notes that it would be an undesired outcome if the scope of protection of the earlier mark were extended to any number juxtaposed with the letter ‘M’.

The numbers ‘1’ and ‘12’, although they both include the numeral ‘1’, are different. Taking into account the abovementioned explanations, the distinctiveness of the signs depends largely on the particular combination of letters and numbers. Since the marks are very short, the average consumer will easily grasp the differences in the numbers. These differences have a higher impact on the overall impression than in longer marks and can modify the perception of those marks, even if the difference is in just one numeral (20/05/2011, R 165/2010-4, 4COM / 3COM, § 24; 23/08/2011, R 1631/2010-4, M² /MM, § 13).

It is therefore considered that the visual and aural similarities between the signs are not enough to counteract the visual and aural dissimilarities.

The Opposition Division also takes into account the fact that the services in question have been assumed to be identical, as well as the principle of interdependence in this respect. Nevertheless, it is concluded that the noticeable differences in the signs and their short lengths have the effect of ensuring that the relevant public will be able to safely differentiate between them, and would not even consider that they are used in connection to related services.

The opponent 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous decisions cited by the opponent refer to cases involving signs and/or goods and/or services different from those involved in the present case. Therefore, the same reasoning cannot be expected to be followed or the same outcome reached. Consequently, those decisions are not relevant to the present proceedings.

The opponent also cites a judgment of the General Court in support of its arguments for the similarity of the signs, namely 29/02/2012, T‑77/10, ‘L112/L.114’, EU:T:2012:95. However, for the same reasons already given above, the case cited by the opponent is not considered relevant to the present proceedings.

Finally, the opponent further refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in a Member State that is relevant to the proceedings.

In the present case, the national decision referred to by the opponent (decision O‑333-18 of the UK Intellectual Property Office, dated 31/05/2018, appealed) is not sufficient to affect the outcome of the present proceedings. The decision submitted to the Opposition Division is indeed factually relevant. However, on account of the autonomy of the European Union trade mark regime and of the Office’s practice, the outcome need not necessarily be the same.

Considering all the above, even assuming that the services are identical, and in the absence of evidence that the earlier mark has acquired enhanced distinctiveness, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on European Union trade mark registration No 16 176 018 for the figurative mark . This earlier right invoked by the opponent is less similar to the contested mark, since it contains further figurative elements that are not present in the contested trade mark. Moreover, it covers the same scope of 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.