OPPOSITION No B 2 903 956

Delta Mu, 48 rue de Sarliève, 63800 Cournon D'auvergne, France (opponent), represented by Fidal Societe D'Avocats, rue Evariste Galois 3 et 5, BP1, 63064 Clermont-Ferrand Cedex 1, France (professional representative)

a g a i n s t

Nurullah Gündogdu, Ackerstr. 20, 40233 Düsseldorf, Germany, Gisstec GmbH, Heesenstr. 70, Düsseldorf, Germany (applicants).

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

DECISION:

1. Opposition No B 2 903 956 is partially upheld, namely for the following contested goods and services:

Class 9: Software.

Class 38: Telecommunications.

Class 41: Education, entertainment and sport services; publishing and reporting; education, entertainment and sports.

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

2. European Union trade mark application No 16 643 306 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 643 306 for the figurative mark . The opposition is based on European Union trade mark registration No 13 005 616 for the word mark ‘Opti Mu’. The opponent invoked Article 8(1)(a) and (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: Scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; measuring instruments; recorded computer software; software; computer apparatus and software for processing data; graphical user interface software; computer hardware and computer software for database management; computer software for application and database integration; computer software and hardware to enable searching of data and connection to databases and the internet; interfaces for computers; computer programs [downloadable software]; computer software for accessing information directories that may be downloaded from the global computer network; computer software for image processing, for document management, for printer management, for network transmission and reception, for document creation, for database management and for document and image processing; computer software to enable the searching of data; computer software for creating searchable databases of information and data; apparatus, instruments and media for recording, reproduction, carrying, storing, processing, handling, transmitting, broadcasting, retrieving and reproduction of computer software, information, data and codes.

Class 37: Repair, maintenance and installation of measuring instruments.

Class 41: Education; providing of training; entertainment; information (education-); arranging and conducting of training workshops, seminars, training sessions and conferences; publication of texts, other than publicity texts; publication of printed matter (including in electronic form), except for publicity purposes.

Class 42: Information technology auditing relating to the requirements of a company in terms of measuring, conditions and limits on the use of measuring apparatus; business consultancy relating to measuring (engineering); computer programming relating to measuring instruments; software design and development; installation, maintenance, updating and rental of computer software; software as a service [SaaS]; computer software technical support services; computer software consultancy; computer software research; providing of information, consultancy and assistance in the field of computer software for measuring purposes; updating of software; integration of computer systems, computer hardware and computer software; computer system design; creating programmes for data processing; hosting the web sites of others on a computer server for a global computer network; research and development and project analysis, in particular relating to metrology.

The contested goods and services are the following:

Class 9: Software.

Class 35: Business management; business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; arranging subscriptions to internet services; online ordering services; ordering services for third parties; provision of an on-line marketplace for buyers and sellers of goods and services; providing consumer product information relating to software; provision of online price comparison services.

Class 38: Telecommunications.

Class 41: Education, entertainment and sport services; publishing and reporting; translation and interpretation; education, entertainment and sports.

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Software is identically contained in both lists of goods.

Contested services in Class 35

The contested services in Class 35, namely business management; business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; arranging subscriptions to internet services; online ordering services; ordering services for third parties; provision of an on-line marketplace for buyers and sellers of goods and services; providing consumer product information relating to software; provision of online price comparison services include a range of business assistance, management, advertising, administrative services and commercial trading services. They are usually rendered by specialist companies, such as business consultants and advertising agencies. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share.

The contested services in Class 35 are dissimilar to the opponent’s goods in Class 9 (in general, different types of apparatus and instruments, hardware and software), as well as to the opponent’s services in Class 37 (repair, maintenance and installation services), Class 41 (education, training, entertainment, publishing services) and Class 42 (scientific and technological services, IT services, design and development of computer software).

The companies manufacturing goods Class 9 and/or providing services in Classes 37, 41 and 42 generally do not provide business management advice, advertising and commercial trading as they operate on a different field of business. In view of the foregoing, contrary to the opponent’s arguments, it is clear that the contested services in Class 35 are services of a different nature and purpose than the above services covered by the earlier mark. The services at issue are neither complementary nor in competition and they are not generally provided by the same companies or through the same trade channels.

Contested services in Class 38

The contested telecommunications are similar to the opponent’s software since they have the same purpose, target the same relevant public and can share the same distribution channels. Furthermore, they are complementary.

Contested services in Class 41

Education, entertainment (both mentioned twice) are identically contained in both lists of services.

The contested publishing include, as a broader category, or overlap with, the opponent’s publication of printed matter (including in electronic form), except for publicity purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested sport services (listed twice, with slightly different wording) are similar to the opponent’s entertainment services as they have the same purpose. They also have the same relevant public and distribution channels.

The contested reporting is the act of reporting news or other events of general interest. The opponent’s publishing services is the activity of making information available to the general public. To that extent these services are similar since they have similar natures and purposes. They are also complementary and might be provided through the same distribution channels.

The contested translation involves the communication of the meaning of a source- language text by means of an equivalent target language text, whereas the contested interpretation refers to the facilitation of dialogue between parties that use different languages. As such, these services are dissimilar to the opponent’s services in Class 41, which are mainly provided in the fields of education, entertainment and publishing services. The contested services and the opponent’s services in Class 41 have different natures and purposes. They have different origins and are offered to different customers through different channels. Moreover, they are not in competition or complementary. The same applies also to the contested services and the remaining opponent’s goods and services in Class 9, 37 and 42. There are no factors under the criteria specified above that, taken separately or in combination, could result in a finding of any level of similarity between the contested services and any of the opponent’s goods and services.

Contested services in Class 42

The contested design services and IT services include, as a broader categories, or overlap with, the opponent’s computer system design. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested testing, authentication and quality control are frequently carried out as part of the opponent’s software design and development in Class 42, in order to obtain the desired results. These services are highly similar, since they coincide in nature, can coincide in purpose and coincide in distribution channels and points of sale. They may be offered by the same specialists and may target the same public to satisfy similar or complementary needs.

The contested science and technology services are various scientific and technology-related activities that are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activity; such services are provided by members of professions such as chemists, physicists, engineers or computer programmers. In light of the above, the contested services are similar to the opponent’s software design and development; installation, maintenance, updating of computer software as they have the same purpose. In addition, they are directed at the same relevant public and may have the same providers.

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 the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to high depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Opti Mu
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 verbal element ‘OPTYMU’ does not evoke or suggest any meaning in certain territories, for example in those countries where Danish and Swedish are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Danish and Swedish-speaking parts of the public.

The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The earlier mark ‘Opti Mu’ is a word mark. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The contested mark is a figurative mark composed of the verbal element ‘OPTYMU’ written in slightly stylised black bold lower case letters. The letter ‘O’ at the beginning of the contested mark is upper case. This verbal element is placed below a figurative element which may be described as a violet circle with five white straight lines of different thickness crossing it and descending from left to right. This figurative element is a basic geometrical shape and therefore is of weak distinctive character.

Additionally 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 ‘Opti Mu’ in the earlier mark nor ‘OPTYMU’ in the contested sign has a meaning for the relevant public as a whole and they are, therefore, distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘OPT*MU’, whereas they differ in the middle part of the marks, namely the letters ‘I’ vs ‘Y’ respectively, the space between the two verbal elements of the earlier mark and the graphic device of the contested sign. Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered quite simple and it will not lead the consumer’s attention away from the verbal element it seems to embellish.

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

Aurally, the pronunciation of the signs coincides in the identical sound generated by the strings of letters ‘Opti Mu’ in the earlier mark and ‘OPTYMU’ in the contested sign. Indeed, the letters ‘I’ vs ‘Y’ in the respective signs will be pronounced almost identically by the public under analysis. The violet circle and the stylisation of the verbal element in the contested sign have no impact on the phonetic comparison as they will not be enunciated.

Therefore, the signs are aurally almost identical.

Conceptually, neither of the signs has a meaning for the relevant public, as defined above. 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.

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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In the present case, the goods and services at issue are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public is both the public at large and the professional public and their degree of attention may vary from average to high. The earlier mark has a normal degree of distinctive character.

The signs are visually similar at least to an average degree and aurally almost identical. Moreover, both signs lack any meaning in the relevant territory that could differentiate them. The difference in the fourth letter of the signs under comparison i.e. ‘I’ in the earlier mark versus ‘Y’ in the contested sign is almost imperceptible from the phonetic point of view and is clearly not able to counteract the overwhelming similarities between them.

In relation to the other differences created by the figurative elements of the contested sign (i.e. the coloured circle and the slight stylization of the verbal elements), the Opposition Division finds that they have a lesser impact on the global impression given by the signs, for the reasons explained above in section c) of the present decision.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Danish- and Swedish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 005 616. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

Andrea VALISA

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.