OPPOSITION No B 3 025 197

Telefónica Germany GmbH & Co. OHG, Georg-Brauchle-Ring 50, 80992, Munich, Germany (opponent), represented by Müller Fottner Steinecke Rechtsanwalts- Und Patentanwaltspartnerschaft mbB, Prielmayerstr. 3, 80335, Munich, Germany (professional representative)

a g a i n s t

Dias Almeida Data Processing and Systems, Ittigenstrasse 17, 3063, Ittigen, Switzerland (applicant), represented by Sergio Rodrigues, Avenida Afonso Costa n7 rc esq, 2845-339, Amora, Portugal (professional representative).

On 13/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 197 is upheld for all the contested services.

2. European Union trade mark application No 17 387 804 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 387 804 for the word mark ‘NOVOLOOP’. The opposition is based on European Union trade mark registration No 13 371 463 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.

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission and/or reproduction of sound and/or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Data storage devices; Chip cards, encoded electronic chip cards, SIM cards, USB flash drives; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment; Data processing apparatus; Fire-extinguishing apparatus; Telecommunications equipment, in particular for the fixed network and mobile radio sectors; Computers; Computer software; Clothing for protection against accidents, irradiation and fire; Head protection; Spectacles, spectacle lenses, sunglasses, protective goggles and cases therefor; Contact lenses; Downloadable electronic publications; magnets, magnetic cards; Encoded cards; parts and attachments for the aforesaid goods, not included in other classes.

Class 38: Telecommunications; rental of telecommunication equipment; network provider services, namely rental of access time to data networks, in particular the internet; providing access to data networks and databases; telecommunication services for access to databases; providing access to databases; broadcasting services; leasing and/or rental of access time to computer databases.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; electronic data processing consultancy; engineering services; technical advice and consultancy; preparation of data processing programmes; services of an edp programmer; hiring out data processing equipment; rental of computers and software; hiring out data processing equipment; computer system design; computer system analysis; conversion of computer programmes and data (other than physical alteration); hosting of internet sites; technical monitoring of telecommunications network systems; information broker and provider services, namely research with regard to new products, for others; meteorological forecasting; technical planning of telecommunications equipment.

The contested services are the following:

Class 38: Provision of access to content, websites and portals; arranging access to databases on the internet; leasing of access time to a computer database; providing access to databases; providing access to online computer databases; providing access to web sites on the internet; provision of access to data via the internet; web site forwarding services; computer communication and internet access.

Class 42: Advisory services relating to computer systems design; computer system design; consultancy with regard to webpage design; creating, designing and maintaining web sites; custom design services; database design and development; design and maintenance of web sites for others; design feasibility studies; design of computer databases; design of storage systems; design services for data processing systems; design services relating to data processing tools; design services relating to data processing test tools; design services relating to data processors; scientific and technological design; design services; application service provider [asp], namely, hosting computer software applications of others; cloud computing; consultancy and information services relating to software rental; consulting in the field of cloud computing networks and applications; electronic data storage and data back-up services; electronic storage of digital images; electronic storage of digital photographs; electronic storage of documents; hosting an online website for creating and hosting micro websites for businesses; hosting computer sites [web sites]; hosting of customized web pages; hosting of databases; hosting of computerized data, files, applications and information; hosting of interactive applications; hosting on-line web facilities for others; hosting the computer sites (web sites) of others; infrastructure as a service [iaas]; off-site data backup; online data storage; providing back-up computer programs and facilities; providing on-line non downloadable software for database management; providing online non-downloadable software for use in supply chain management; providing temporary use of on-line non-downloadable software for database management; providing temporary use of on-line non-downloadable software for importing and managing data; providing temporary use of on-line non-downloadable software for inventory management; providing temporary use of non downloadable business software; providing temporary use of non-downloadable software applications accessible via a web site; providing temporary use of non-downloadable software for analyzing financial data and generating reports; providing temporary use of on-line non-downloadable software for the management of information; providing temporary use of on-line non-downloadable software for the management of data; providing temporary use of web-based applications; rental of computer database software; rental of database management software; rental of data processing programs; rental of software for data processing; rental of software for importing and managing data; rental of software for inventory management; software as a service [saas]; hosting services and software as a service and rental of software; advisory services relating to computer systems analysis; computer consultancy and advisory services; consultancy relating to the creation of homepages and internet pages; consultancy relating to the design of homepages and internet pages; consultancy services for analysing information systems; consultancy services for designing information systems; provision of expert appraisals relating to computing; provision of expert reports relating to computing; provision of reports relating to computing; provision of technical information in relation to computers; technical advice relating to operation of computers; technical advisory services relating to data processing; technical consultancy relating to the installation and maintenance of computer software; it consultancy, advisory and information services; leasing of data processing systems; rental of a database server (to third parties); rental of computer hardware and facilities; advice and development services relating to computer software; advisory services relating to computer software design; advisory services relating to computer programming; commissioned writing of computer programs, software and code for the creation of web pages on the internet; computer programming and maintenance of computer programs; computer programming and software design; computer programming for data processing; computer programming for the internet; computer programming services for commercial analysis and reporting; computer software design and updating; computer systems integration services; computer software programming services; consultancy relating to computer database programs; consultancy relating to software design and development; creating, maintaining, and modernizing computer software; creating, maintaining and hosting the websites of others; creation of computer programmes for data processing; debugging computer software for others; customized design of computer software; design and development of image processing software; design and development of software for database management; design and development of software for importing and managing data; design and development of data processing software; design and development of data retrieval software; design and development of computer database software; design and development of computer software for logistics; design and development of computer software for reading, transmitting and organising data; design and development of computer software for supply chain management; design of computer database software; design, development and programming of computer software; design, maintenance and up-dating of computer software; development and maintenance of computer database software; designing of data processing programmes; design of homepages and websites; design of virtual reality software; development and creation of computer programmes for data processing; development and testing of software; development of computer database software; development of computer programs for simulating laboratory experiments; development of computer software application solutions; development of data bases; development of data processing programs by order of third parties; development of programmes for data processing; development of virtual reality software; development, updating and maintenance of software and database systems; editing of computer programs; image processing software design; homepage and webpage design; image processing software development; installation of database software; installation, maintenance and updating of database software; installation, repair and maintenance of computer software; maintenance of data bases; maintenance of websites and hosting on-line web facilities for others; preparation of reports relating to computer programmes; preparation of reports relating to computer programming; preparation of data processing programmes; modifying of computer programs; managing the web sites of others; professional consultancy services relating to computer programming; programming of computer software for reading, transmitting and organising data; programming of computer software for evaluation and calculation of data; programming of data processing programs; programming of software for database management; programming of software for importing and managing data; repair of software [maintenance, updating]; research and development of computer software; research, development, design and upgrading of computer software; research in the field of computer programs and software; scientific computer programming services; services for the design of electronic data processing software; software design for others; software creation; software development; testing of computer software; technical consultancy services relating to computer programming; support and maintenance services for computer software; updating and adapting of computer programs according to user requirements; updating internet pages; updating of software data bases; updating of software for data processing; writing and updating computer software; website usability testing services; writing of programs for data processing; software development, programming and implementation; comparative analysis studies of the performance of computer systems; design and development of data processing systems; design and development of data storage systems; design and development of electronic database software; design and development of systems for data input, output, processing, display and storage; development of systems for the processing of data; development of systems for the storage of data; it project management; maintenance of data processing software; research in the field of data processing technology; research relating to data processing; research relating to the computerised automation of technical processes; research relating to the computerised automation of administrative processes; updating websites for others; it services; engineering services relating to automatic data processing; engineering services relating to computer programming; engineering services relating to data processing technology; engineering services relating to data processing; preparation of technical reports; preparation of engineering reports; provision of engineering reports; engineering services; astronomy consultation; natural science services; advisory services relating to science; calibration of instruments; scientific research conducted using databases; technical consultation in the field of aerospace engineering; science and technology services; evaluation of performance of computer systems against bench-mark references; evaluation of performance of data-processing against bench-mark references; testing of computer programs; testing of electronic data processing systems; testing, authentication and quality control.

In its observations, the applicant declares that the relevant contested services will be provided to only its clients and partners, thus excluding any risk of confusion and association with the opponent’s services. However, the 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 and services is not relevant for this comparison, since it is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

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

The term ‘in particular’, used in the opponent’s list goods and services, indicates that the specific goods and 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).

However, the term ‘namely’, used in the applicant’s and opponent’s lists of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 in Class 38

Leasing of access time to a computer database is identically contained in both lists of services.

The contested provision of access to content, websites and portals; providing access to web sites on the internet; provision of access to data via the internet are included in the broad category of the opponent’s providing access to data networks in Class 38. Therefore, they are identical.

The contested arranging access to databases on the internet; providing access to databases; providing access to online computer databases are included in the broad category of the opponent’s providing access to databases in Class 38. Therefore, they are identical.

The contested web site forwarding services; computer communication and internet access are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested debugging computer software for others; website usability testing services; evaluation of performance of computer systems against bench-mark references; evaluation of performance of data-processing against bench-mark references; testing of computer programs; testing of electronic data processing systems; testing, authentication and quality control are testing, authentication and quality control services that concern or can concern computers and software. These goods are at least similar to the opponent’s design and development of computer hardware and software, as they usually have the same providers, relevant public and distribution channels.

All the remaining contested services in this class can be divided into categories of services belonging to the market sectors of design services (e.g. design services related to data processors); IT services (e.g. cloud computing; advisory services relating to computer system analysis; leasing of data processing systems; IT consultancy, advisory and information services); science and technology services (inter alia, engineering services related to data processing, astronomy consultation, calibration of instruments, scientific and technological design).

In addition, the opponent’s services in this class cover services belonging to those sectors. For example, the opponent’s services include scientific and technological services (science and technology services sector); computer system design (design services sector); computer system analysis, hiring of data processing equipment (IT services sector). Although it cannot be excluded that some of the contested services coincide in numerous relevant criteria such as their nature, purpose and complementarity, and whether they are in competition or even identical, they clearly belong to the abovementioned respective homogeneous sectors of services on the market and the majority of them are – at least – provided by the same companies, target the same end users and are offered in the same places through the same distribution channels. Based on this conclusion, none of the contested services can be considered dissimilar to the opponent’s services.

It follows, therefore, that all the contested services are at least similar to the opponent’s services.

b) 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 at least similar are specialised services and mainly directed at business customers with specific professional knowledge or expertise in the field of telecommunications, IT, design and scientific services.

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.

c) The signs

	NOVOLOOP
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).

Consumers perceiving a word sign will break it down into elements that suggest a concrete meaning or resemble known words (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51, confirmed 01/12/2005, C‑512/04 P, Vitakraft, EU:C:2005:736).

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 signs’ coinciding elements, ‘LOOP’, convey different meanings in several languages of the European Union. In the present case, it cannot be excluded that the professional public targeted by the relevant services might perceive this element with the meaning used in the IT sector: ‘a sequence of program instructions that are repeatedly executed until certain conditions are reached’ (for English, see https://www.collinsdictionary.com/dictionary/english/loop; for Italian, see https://www.garzantilinguistica.it/ricerca/?q=loop; and, for German, see https://www.duden.de/suchen/dudenonline/loop). It follows that the meaning conveyed by this element is considered allusive in relation to some of the relevant IT-related services. Nevertheless, that allusion — which refers to a sequence of software instructions, rather than to IT services per se — is sufficiently distant from and imaginative in relation to the services at stake that this would not affect its distinctiveness in a material way. Consequently, this element is considered distinctive to a normal degree. In addition, the word ‘NOVO’, formed of the first four letters of the contested sign, will be perceived, inter alia, in Italian, as resembling (or as an archaic form of) the word ‘nuovo’, which means ‘new’. Since the meaning of the word ‘NOVO’ will be perceived as a simple qualifier of the following element, ‘LOOP’, which the signs have in common (thus reducing the conceptual difference between the signs), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the elements ‘NOVO’ and ‘LOOP’ convey the meanings described above, such as the Italian-speaking part of the public.

Finally, rectangular backgrounds such as those in the earlier mark are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27).

Visually and aurally, the signs coincide in the element ‘LOOP’, which forms the entire earlier mark and is formed of the last four letters of the contested application. However, they differ in the first four letters, ‘NOVO’, of the earlier sign. In addition, the signs differ visually in the earlier trade mark’s graphical elements, which are less significant, and in its slight stylisation.

Therefore, taking into account the above principles, the signs are visually and aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In particular, given the signs’ coinciding concept conveyed by the word ‘LOOP’, their sole difference is due to the contested sign’s additional word ‘NOVO’. However, this element will be perceived as merely qualifying as ‘new’ the subsequent word ‘LOOP’, so the conceptual difference is limited.

As the signs will be associated with similar meanings, they 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.

d) 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 undertaking or economically linked undertakings.

In the present case, the services are partly identical and partly at least similar. They target the professional public, whose degree of attention may vary from average to high.

The signs under comparison are visually and aurally similar to an above average degree and conceptually similar to a high degree. In particular, the earlier trade mark is entirely reproduced as the last four letters of the contested sign. In terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Moreover, in the present case, the contested trade mark’s additional element, ‘NOVO’, has a limited differentiating impact, since it merely qualifies as ‘new’ the sign’s coinciding concept conveyed by the word ‘LOOP’. 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 services that it designates, for instance a ‘new’ line of service solutions (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Taking all the above into account, the Opposition Division considers that the differences between the signs — only the contested sign’s element ‘NOVO’ and the earlier trade mark’s less significant graphical elements and stylisation — are not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar services, is likely to think that they come from the same undertaking or from economically linked undertakings, notwithstanding the high degree of attention paid by part of the relevant public.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘LOOP’. In support of its argument, the applicant refers to some EUTM registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘LOOP’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part 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.

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

Andrea VALISA

Aldo BLASI

Michele M. BENEDETTI-ALOISI

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.