OPPOSITION No B 2 925 082

Egis, 15, avenue du Centre, 78280, Guyancourt, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt CS 90017, 92665, Asnières-sur -Seine, France (professional representative)

a g a i n s t

eGiss A/S, Delta 6, 8382 Hinnerup, Denmark (applicant), represented by Patrade A/S, Ceresbyen 75, 8000, Aarhus C, Denmark (professional representative).

On 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 925 082 is upheld for all the contested services, namely

Class 42: Administration of mail servers; Administration of user rights in computer networks; Advice and consultancy in relation to computer networking applications; Advice and development services relating to computer software; Advisory and consultancy services relating to computer hardware; Advisory and information services relating to computer software; Advisory and information services relating to computer peripherals; Advisory services relating to computer software used for printing; Advisory services relating to the use of computer software; Advisory services relating to computer systems design; Advisory services relating to computer hardware design; Advisory services relating to computer based information systems; Analytic services relating to computers; Comparative analysis studies of the efficiency of computer systems; Comparative analysis studies of the performance of computer systems; Computer and computer software rental; Computer design and programming services; Computer diagnostic services; Computer network services; Computer network configuration services; Computer project management services; Computer rental and updating of computer software; Computer research services; Computer system analysis; Data security consultancy; Development and testing of computing methods, algorithms and software; Integration of computer systems and networks; IT consultancy, advisory and information services; IT project management; On-line computer services; Operating search engines; Preparation of computer programs for data processing; Remote server administration; Rental of computer hardware and computer software; Rental of computer hardware and facilities; Rental of computers and computer software; Renting out hardware and software; Research relating to computers; Research relating to data processing; Server administration; Technical research relating to computers; Systems analysis (Computer -); Troubleshooting of computer hardware and software problems; Advisory services relating to product testing; Certification [quality control]; Computer testing; Quality control relating to computer software; Quality control relating to computer systems; Quality control services; Testing of computer programs; Testing of computing equipment; Testing of electronic data processing systems; Computer system design.

2. European Union trade mark application No 16 548 414 is rejected for all the contested services. It may proceed for the remaining services in Classes 35 and 36.

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 services of European Union trade mark application No 16 548 414 for the word mark ‘eGISS’, namely against all the services in Class 42. The opposition is based on European Union trade mark registration No 5 831 946 for the 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 has not submitted 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 services

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

Class 42: Metrology, exterior and interior measuring of noise, vibrations providing assistance with the design of noise protection, modelling of the propagation of different waves and their impacts, scientific studies, all these services concerning the reduction of noise emitted by transport and industries; architectural services; engineering, construction drafting, non-business; technical research, technical consultancy, scientific and industrial research; studies, consultancy and surveying relating to the definition and completion of construction projects, and more particularly to the construction and operation of airports, roads, bridges, rail and port networks; computer software design; maintenance of computer software; materials testing; studies for the design of equipment for airports, bridges, roads, rail and port networks; measurement, analysis; studies and engineering relating to

signalling, safety and information for users of the air, road, rail, port and bridge networks; seismic studies, aerodynamic stability studies; studies relating to road equipment, the improvement of infrastructure safety, studies in the field of the regulation of urban, road and motorway traffic for the purposes of improving the management of road traffic, engineering studies and work in the field of road safety and the provision of information to the road user; forecasting relating to car use and decision-making assistance to the driver; office functions in the field of safety equipment, signalling, the operation of transport infrastructures and road communication equipment, air analysis; Technical inspection of vehicles.

The contested services are the following:

Class 42: Administration of mail servers; Administration of user rights in computer networks; Advice and consultancy in relation to computer networking applications; Advice and development services relating to computer software; Advisory and consultancy services relating to computer hardware; Advisory and information services relating to computer software; Advisory and information services relating to computer peripherals; Advisory services relating to computer software used for printing; Advisory services relating to the use of computer software; Advisory services relating to computer systems design; Advisory services relating to computer hardware design; Advisory services relating to computer based information systems; Analytic services relating to computers; Comparative analysis studies of the efficiency of computer systems; Comparative analysis studies of the performance of computer systems; Computer and computer software rental; Computer design and programming services; Computer diagnostic services; Computer network services; Computer network configuration services; Computer project management services; Computer rental and updating of computer software; Computer research services; Computer system analysis; Data security consultancy; Development and testing of computing methods, algorithms and software; Integration of computer systems and networks; IT consultancy, advisory and information services; IT project management; On-line computer services; Operating search engines; Preparation of computer programs for data processing; Remote server administration; Rental of computer hardware and computer software; Rental of computer hardware and facilities; Rental of computers and computer software; Renting out hardware and software; Research relating to computers; Research relating to data processing; Server administration; Technical research relating to computers; Systems analysis (Computer -); Troubleshooting of computer hardware and software problems; Advisory services relating to product testing; Certification [quality control]; Computer testing; Quality control relating to computer software; Quality control relating to computer systems; Quality control services; Testing of computer programs; Testing of computing equipment; Testing of electronic data processing systems; Computer system design.

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

The applicant’s services can be grouped under two general categories: IT services and quality control and testing. The former consist in the study or use of systems (especially computers, servers, networks and telecommunication devices) for storing, retrieving, and sending information and are dedicated to software development, programming and implementation, computer hardware, rental, as well as advice and consultancy in connection with the aforesaid.

Consequently, the contested services, namely administration of mail servers; administration of user rights in computer networks; advice and consultancy in relation to computer networking applications; advice and development services relating to computer software; advisory and consultancy services relating to computer hardware; advisory and information services relating to computer software; advisory and information services relating to computer peripherals; advisory services relating to computer software used for printing; advisory services relating to the use of computer software; advisory services relating to computer systems design; advisory services relating to computer hardware design; advisory services relating to computer based information systems; analytic services relating to computers; comparative analysis studies of the efficiency of computer systems; comparative analysis studies of the performance of computer systems; computer and computer software rental; computer design and programming services; computer diagnostic services; computer network services; computer network configuration services; computer project management services; computer rental and updating of computer software; computer research services; computer system analysis; data security consultancy; development and testing of computing methods, algorithms and software; integration of computer systems and networks; IT consultancy, advisory and information services; IT project management; on-line computer services; operating search engines; preparation of computer programs for data processing; remote server administration; rental of computer hardware and computer software; rental of computer hardware and facilities; rental of computers and computer software; renting out hardware and software; research relating to computers; research relating to data processing; server administration; technical research relating to computers; systems analysis (Computer -); troubleshooting of computer hardware and software problems; computer system design, coincide with the opponent’s computer software design; maintenance of computer software in the relevant public, they are provided through the same distribution channels and are generally rendered by the same kind of undertakings (professionals in the IT field) that normally provide a full spectrum of information technology (IT) solutions tailored to the needs of their customers. Therefore, these services are at least similar.

Quality control services involve maintaining standards in manufactured products by testing a sample of the output against the specification. Testing is a process or system which is used to identify characteristics or problems.

Therefore, the contested advisory services relating to product testing; certification [quality control]; computer testing; quality control relating to computer software; quality control relating to computer systems; quality control services; testing of computer programs; testing of computing equipment and testing of electronic data processing systems may be performed by the same projects teams or companies who provide the opponent’s computer software design as part of the product delivery process. They will address the same public and will serve the same general purpose which is the delivery of products complying with certain quality standards. Moreover, there is a degree of complementarity between the services. Therefore, they are at least similar.

According to the applicant, some of the opponent’s services such as technical research are vague and broad terms, however these terms have not been used in the comparison of services of the opposing marks. Therefore, this argument is irrelevant for the present case.

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

The degree of attention may vary from average to high, depending on the specialised nature of the services, their sophistication, frequency of purchase and price.

3. The signs

	eGISS
Earlier trade mark	Contested sign

The relevant territory is 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 opponent’s sign is a figurative mark composed of a green letter ‘e’ enclosed in a green circle and followed by a sequence of letters ‘egis’. The sign as a whole will not be associated with any concept by the relevant public and, in consequence, it enjoys a normal degree of distinctiveness. A part of the public will read the green letter ‘e’ as the initial letter of the element ‘EGIS’ which it precedes; on that account, it is a secondary element in the sign, as it is semantically subordinate to the longer element ‘egis’ to which it refers. Another part of the public might associate the letter ‘e’ as referring to ‘energy’ or ‘electronic’ by analogy with the English expression ‘e-mail’ referring to ‘electronic mail’. For this part of the public the distinctiveness of this letter is weak in respect of some services. The sequence of letters ‘egis’ is not meaningful and, therefore, enjoys a normal degree of distinctiveness.

The earlier mark does not have any elements that could be considered clearly more dominant (visually outstanding) than other elements.

The contested sign is a word mark ‘eGISS’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters; furthermore, for the same reasons, they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

The word ‘eGISS’ as a whole will not be associated with any meaning and is, therefore, averagely distinctive. It should be taken into account that the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, however, the fact remains that, 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 him (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51). In this regard, it cannot be ruled out that a part of the public will dissect the contested sign as ‘e-GISS’, where the letter ‘e’ will be associated with ‘energy’ or ‘electronics’ and, therefore, will be lowly distinctive for some of the services covered by the contested sign. The component ‘GISS’ will be meaningless and, in consequence, distinctive for this part of the public.

Visually, the signs coincide in the four letters ‘E-G-I-S’ out of the five letters ‘E E-G-I-S’ of the earlier mark and ‘E-G-I-S-S’ of the contested sign. However, they differ in the stylisation of the letters of the opponent’s mark which have no counterparts in the contested sign. They further differ in the first letter ‘e’ of the earlier mark and the last letter ‘s’ of the contested sign.

In this regard, 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).

In view of the above, the signs are similar to an average 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 syllables ‘*E-GIS*’, present identically in both signs. The signs will be pronounced identically by the part of the public that will not read the initial green letter ‘e’ of the earlier mark, as it will perceive it merely as a reference to the initial letter of the element ‘EGIS’ which it precedes. For the other part of the public the signs also have a highly similar rhythm and length.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, as explained previously, neither of the signs as a whole will be associated with any concept.

For the part of the public that will read in both signs the first letters ‘e’ as referring to a concept of ‘energy’ or ‘electronics’, the overlap between the signs is in the weakly distinctive elements. The remaining components, namely ‘EGIS’ of the earlier mark and ‘GISS’ of the contested sign, have no meanings. Accordingly, for this part of the public, the signs are conceptually lowly similar.

For the part of the public who will perceive both signs as a whole and will not associate them with any meaning, a conceptual comparison is not possible and 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, despite the presence of a weakly distinctive element in the mark, for a part of the public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the services of the opposing marks have been found to be at least similar.

Even if for a part of the public a conceptual comparison between the signs cannot be made, and for another part of the public there is a low degree of conceptual similarity, the marks are aurally highly similar, if not identical for a part of the public; moreover, there is an average degree of visual similarity.

The signs have a highly similar structure and length. Moreover, they share four letters ‘EGIS’ out of the five letters ‘E E-G-I-S’ of the earlier mark and ‘E-G-I-S-S’ of the contested sign, which are additionally positioned in the same order in both signs.

The visual and aural similarities between the signs clearly outweigh the differences.

The applicant claims that the services it provides are directed solely at the professional public whose level of attention will be high due to the complexity of the industry they concern. In this regard it must be noted that comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Therefore, the Opposition Division considers that the applicant’s assessment is not necessarily true for all the services covered by the applicant’s services based on their natural meaning. Services such as computer network configuration services; troubleshooting of computer hardware and software problems or advisory services relating to the use of computer software may as well be targeted at the public at large whose level of attention will be higher than average but not exceptionally high.

Moreover, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All the other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (judgment of 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56; decision of 06/09/2010, R 1419/2009-4, Hasi). In the present case, the differences between the signs are in fact confined to secondary and figurative elements and the last letter of the contested sign. As a result, what the relevant public will keep in mind is the identical and distinctive to an average degree sequence of letters ‘E-G-I-S’ contained in both signs.

Likewise, account must be taken of the fact that average consumers, even those who pay a high degree of attention, 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 831 946. It follows that the contested trade mark must be rejected for all the contested services. It may proceed for the remaining non-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

Gueorgui IVANOV

Anna MAKOWSKA

Monika CISZEWSKA

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.