OPPOSITION No B 2 963 935

Bison Schweiz AG, Allee 1A, 6210, Sursee, Switzerland (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

Bizon Int Spolka z o.o. Ltd, Europejska 4 Tomice, 05-532 Baniocha, Poland (applicant).

On 01/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 963 935 is upheld for all the contested services, namely:

Class 42: Design and development of computer hardware and software.

2. European Union trade mark application No 16 450 223 is rejected for all the contested services. It may proceed for the remaining goods and 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 450 223 for the figurative mark , namely against some of the services in Class 42. The opposition is based on European Union trade mark registration No 10 660 314 for the word mark ‘BISON’. 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:

Class 9: Magnetic and optical data carriers, optical discs, floppy disks, all the aforesaid goods not being thematically related to animals; data-processing equipment and computers, computer peripheral devices, computer keyboards, floppy disc drives (for computers), memories for data processing equipment, magnetic tape units [for computers], electronic pens (visual display units); apparatus for recording, apparatus for transmission and reproduction of sound or images, audio and image receivers; electronic display boards; computer software and computer operating programs.

Class 42: Computer programming; consultancy in the field of computers; computer software (updating of-); computer software design; rental of computer software and of data processing apparatus; restoration of computer dates; recovery of computer data; computer systems analyses.

The contested services are the following:

Class 42: Design and development of computer hardware and software.

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.

Design and development of computer software are identically contained in both lists of services (including synonyms).

The contested design and development of computer hardware are similar to the opponent’s consultancy in the field of computers, as they have the same general purpose (i.e. ensuring that IT solutions fit customers’ objectives), are complementary (the opponent’s services are important for the provision of the applicant’s services) and target the same end user.

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 as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the specialised nature or degree of sophistication of the services, as well as on the terms and conditions of the services purchased.

3. The signs

BISON
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 earlier mark is a word mark consisting of the element ‘BISON’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark consisting of the verbal element ‘BIZON’, depicted in slightly stylised upper case black letters on the left-hand side of the sign, and a highly stylised figurative element, on the right-hand side of the sign, depicting the head of an animal resembling a bison, in black (the head) and white (the horns).

The only element, ‘BISON’, of the earlier mark and the verbal element, ‘BIZON’, of the contested sign are both meaningful in the relevant territory, as they are two linguistic versions of the same concept, that is ‘a humpbacked shaggy-haired wild ox native to North America and Europe’ (information extracted from Oxford Dictionaries on 01/08/2018 at https://en.oxforddictionaries.com/definition/bison). While ‘BISON’ is the term used, for example, in English and French, ‘BIZON’ is the equivalent in Polish, Czech and Romanian, for instance. The figurative element of the contested sign, namely the head of an animal resembling a bison, will convey the same meaning.

For the English- and French-speaking parts of the public (which are not familiar with the equivalents of the term in other languages, such as Polish), the verbal element ‘BIZON’ will probably be perceived as a misspelled version of the English and French word ‘BISON’. Although this perception could also work the other way around (i.e. the Polish-speaking part of the public, for instance, might perceive ‘BISON’ as a misspelled version of the known word ‘BIZON’), the presence of the figurative element conveying the same concept and accompanying the element ‘BIZON’ makes it particularly likely that the English- and French-speaking parts of the public will not consider any other option than that of a misspelling of ‘BISON’. Therefore, for the purpose of assessing the likelihood of confusion, the Opposition Division finds it appropriate to focus on the English- and French-speaking parts of the public.

Neither ‘BISON’ nor ‘BIZON’ has any meaning in connection with the relevant services, and they are therefore distinctive. The depiction of a bison’s head in the contested sign reinforces the concept conveyed by the verbal element and, as it has no meaning in connection with the relevant services, it is distinctive.

It should be noted that 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).

Neither of the elements of the contested sign can be considered clearly more dominant (i.e. visually eye-catching) than the other.

Visually, the signs coincide in the sequence of letters ‘BI*ON’. They differ in their third letters, ‘S’ in the earlier mark and ‘Z’ in the contested sign. They also differ in the figurative element depicting a bison’s head and the stylisation of the verbal element in the contested sign.

Therefore, the signs are visually similar to at least an average degree.

Aurally, as established above, for the relevant English-speaking part of public, it is likely that the contested sign will be perceived as a misspelled version of the earlier mark ‘BISON’, and, in this case, the pronunciation of the elements would be the same (i.e. /baɪsən/). The French-speaking part of the public will pronounce both elements ‘BISON’ and ‘BIZON’ in the same way (i.e. /bizɔ̃/).

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same animal, namely the bison, they are conceptually identical.

As the signs have been found similar (and even identical) 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 services in question from the perspective of the relevant public. 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.

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 services are partly identical and partly similar. The signs are visually similar to at least an average degree, and aurally and conceptually identical. The earlier mark has a normal degree of distinctiveness. The degree of attention varies from average to higher than average.

Taking into account the visual similarities between the signs and their aural and conceptual identity, as explained above, it is concluded that a significant part of the relevant public may believe that the services found to be identical or similar come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English- and French-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 660 314. It follows that the contested trade mark must be rejected for all the contested 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

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Irina SOTIROVA

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.