OPPOSITION No B 3 002 063

H-Hotels AG, Braunser Weg 12, 34454 Bad Arolsen, Germany (opponent), represented by Greenfield IP Stoll Schulte Rechtsanwälte Partnerschaftsgesellschaft mbB, Kehrwieder 8, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Tradologic Solutions, 12 Mihail Tenev str., 1784 Sofia, Bulgaria (applicant).

On 07/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 063 is partially upheld, namely for the following contested services:

Class 42: IT services; Science and technology services; Design services.

2. European Union trade mark application No 17 265 612 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of services of European Union trade mark application No 17 265 612 (word mark ‘Krypton Software’), namely against all the services in Class 42. The opposition is based on European Union trade mark registration No 9 735 151 (word mark ‘Krypton’). 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.

The goods and services

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

Class 9: Software for use in hotels.

Class 42: Design and development of computer software for use in hotels; Creating computer programs for use in hotels; Installation, integration and maintenance of software for use in hotels.

The contested services are the following:

Class 42: IT services; Science and technology services; Testing, authentication and quality control; Design services.

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.

The contested IT services include, as a broader category the opponent’s creating computer programs for use in hotels. 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 design services and the opponent’s development of computer software for use in hotels may coincide in distribution channels, provider and relevant public. The services are similar.

The contested science and technology services and the opponent’s design and development of computer software for use in hotels are services of the same nature. They may coincide in provider and relevant public. The services are similar.

The purpose of the contested testing, authentication and quality control is to control and confirm the fulfilment of standards and quality requirements. Contrary to the opponent’s view they have no point in common with the opponent’s goods and services which are hotel-related software and IT services. They serve other needs and are usually provided by different providers, such as certification or accreditation companies. They are also directed to another public. The services are neither complementary, since goods or services are considered complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This does clearly not apply in the present case. The services are dissimilar.

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 and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

The signs

Krypton	Krypton Software
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 common element ‘Krypton’ is meaningful in certain territories, for example in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as Germany and Austria. This element will be understood as the name of a chemical element, i.e. a rare noble gas, by the relevant public. Since it is not descriptive, allusive or otherwise non-distinctive and/or weak for the services in question, it is distinctive.

The element ‘software’ of the contested sign will be associated with ‘computer programs’. Bearing in mind that the relevant services are IT, technological and design services, this element is non-distinctive, since it describes the kind and subject of the services.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in ‘Krypton’. They differ in the additional element ‘software’ of the contested sign, which, however, is non-distinctive.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, i.e. a noble gas, and the differing element has a descriptive meaning, the signs are conceptually highly similar.

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

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.

Global assessment, other arguments and conclusion

The services are partly identical and similar and partly dissimilar. The signs are visually, aurally and conceptually highly similar.

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).

The earlier word mark is reproduced entirely in contested mark and in particular in its beginning which as stated above under part c) is more important, since it catches the attention first. Furthermore, the differing element is non distinctive for the services in question and, therefore, cannot influence the overall impression of the sign.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the German-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. 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 services found to be identical or similar 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Konstantinos MITROU

Lars HELBERT

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.