OPPOSITION No B 3 012 385

Space Systems Engineering, Inc., 1906 El Camino Real, CA94027, Menlo Park, STE 201, United States (opponent), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 - 1, 48010 Bilbao (Bizkaia), Spain (professional representative)

a g a i n s t

Systems Engineering A/S, Østerbrogade 56A – 1, 2100 Copenhagen Ø, Denmark (applicant).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 012 385 is upheld for all the contested goods.

2. European Union trade mark application No 17 394 701 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 394 701 for the word mark ‘Systems Engineering Concept’. The opposition is based on European Union trade mark registration No 14 989 321, for the word mark ‘Space Systems Engineering’. 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 services

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

Class 35: Brand positioning, brand testing, brand strategy services, brand positioning services, brand creation services, brand evaluation services, brand creation services (advertising and promotion).

The contested services are the following:

Class 35: Brand positioning; brand strategy services; brand creation services; brand evaluation services; brand positioning services; promotional marketing; sales promotion for others; publicity and sales promotion.

Contested services in Class 35

Brand positioning; brand strategy services; brand creation services; brand evaluation services; brand positioning services are identically contained in both lists of services.

The contested promotional marketing; sales promotion for others; publicity and sales

promotion services include, as broader categories, or overlap with, the opponent’s brand creation services (advertising and promotion). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical 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 are mainly specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention will tend to be high as these services are important for the development and increase of market share of the targeted entities.

c) The signs

Space Systems Engineering	Systems Engineering Concept
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 word marks are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-language-speaking part of the public such as Ireland, the United Kingdom and Malta.

The common verbal elements ‘Systems Engineering’ denote the branch of engineering, based on systems analysis and information theory, concerned with the design of integrated systems for the relevant public and are, therefore, distinctive in relation to services which are concerned with brand positioning and marketing. These two words are preceded and qualified by the word ‘Space’ in the earlier mark which relates them to the aerospace industry (and is also distinctive), and are followed by the word ‘concept’ in the contested sign which denotes an idea, principle or theory. The latter is of limited distinctiveness as a qualifier in particular relation to the concept-driven services in question (definitions from https://www.collinsdictionary.com/dictionary/english/systems-engineering, 09/07/2019).

Visually, aurally and conceptually, the signs coincide in the distinctive words ‘Systems Engineering’. However, they differ in the initial word ‘Space’ of the earlier mark, also distinctive, and the final word ‘concept’ of the contested sign which is of limited distinctiveness.

Therefore, the signs are similar to an average degree.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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), and that 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The services are identical; the signs are visually, aurally and conceptually similar to an average degree; the distinctive verbal elements of the contested sign are entirely reproduced in the earlier mark which possesses normal distinctiveness in concreto, as correctly established by the opponent. Therefore, contrary to the views of the applicant, a likelihood of confusion does exist.

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

Considering all the above, there is a likelihood of confusion on the part of the English-language-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 989 321. It follows that the contested sign must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Justina GBYL

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.