OPPOSITION No B 3 047 909

Stream Networks, Sia, Cēsu iela 31 k-1, 1012, Rīga, Latvia (opponent), represented by Law Firm Ip Forma, Užupio g. 30, 01203, Vilnius, Lithuania (professional representative)

a g a i n s t

Axianseu - Digital Solutions, S.A., Edifício Atlantis - Av. D. João II, 44 C, Piso 5, 1990-095 Lisboa, Portugal (applicant) represented by Mafalda Vaz Pinto, Rua Castilho 5, 4 andar (6 piso), 1250-066 Lisboa, Portugal (professional representative).

On 30/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 909 is upheld for all the contested services.

2. European Union trade mark application No 17 642 018 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 17 642 018 The opposition is based on Latvian trade mark registration No M 67 707 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, inter alia, the following:

Class 42: Information technology consulting; maintenance of hardware; website development services, webhosting services; science and technology services, research and design in these fields; industrial research and development; design and development of computer hardware and software.

The contested services are the following:

Class 42: IT services; science and technology services; design services; testing, authentication and quality control; scientific technological services.

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 42

Science and technology services and scientific technological services are identically contained in both lists of services (including synonyms).

The contested design services cover, as a broader category, the opponent’s design services in the field of science and technology. The contested IT services include, as a broader category, for example, the opponent’s information technology consulting. 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 opponent’s industrial research and development covers a broad category of services of a technical nature concentrating on finding new or improved processes and products, and on ways of introducing such innovations. During this research and development, testing and quality controls are put into place in order to monitor and measure the progress and quality of the aforesaid research and development. Therefore, the contested testing, authentication and quality control services are similar to the opponent’s industrial research and development as these services can be offered by the same providers, can target the same public and can be provided by the same undertakings.

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 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.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Latvia.

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 comparison should cover signs in their entirety. On occasion, in the event of negligible elements, the Office may decide not to take such elements into consideration for the purposes of the actual comparison, after having duly reasoned why they are considered negligible (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 42). The elements ‘by Axians’ in the contested sign are likely to be disregarded by the relevant public due to their very small size and ancillary position, and given that the mark contains other elements which are immediately perceptible. Therefore, these elements are considered to be negligible and will not be taken into account in the comparison.

The coinciding verbal expression ‘ONE IT’ is made up of the English numeral ‘ONE’, which the majority of the Latvian public will understand as a basic English word, and of ‘IT’, which will be understood as the acronym for information technology and is also the acronym for the equivalent Latvian expression. The element ‘IT’ describes the nature of some of the services at issue or will be perceived as indicating that they are rendered in the field of IT. Therefore, it is non-distinctive or weak, depending on the services considered. However, the expression ‘ONE IT’ as a whole does not have an obvious meaning and is likely to be perceived as just the two words placed next to each other, of which ‘ONE’ is the main indicator of commercial origin. Therefore, the coinciding expression is, as a whole, distinctive to a normal degree.

In the earlier trade mark the words ‘ONE IT’, of which ‘IT’ is written in slightly stylised coloured squares, constitute the dominant element. The verbal expression ‘NĀKOTNES RISINĀJUMI ŠODIEN’ (Latvian for ‘future solutions today’) has a limited visual impact due to its significantly smaller size and lighter typeface. In addition, it will be perceived by the relevant public as a mere laudatory and promotional slogan indicating that these services are offering in particular quick solutions. Therefore, it has a very limited degree of distinctiveness, if any.

The contested sign is a kind of diptych depicting the same elements on both sides, but in slightly different configurations.

The figurative elements in the contested sign consist of stylised clouds. In relation to IT services they bring to mind that these are cloud-based services and are, therefore, weak. 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 and/or typeface (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the coincidences are found in the verbal elements.

Visually, the signs coincide in the verbal expression ‘ONE IT’ which plays an independent and distinctive role in both signs. However, they differ in the figurative elements of the signs and in the verbal expression of the earlier mark which have a reduced impact in the assessment for the reasons explained above. As the public will immediately perceive that the same elements are repeated twice in the contested sign, the ‘redundant’ elements do not create a significant visual difference. Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements ‛ONE IT’, present identically in both signs. The pronunciation differs in the words forming the sentence ‛NĀKOTNES RISINĀJUMI ŠODIEN’ of the earlier sign, which have no counterpart in the contested sign. However, as the aforesaid sentence in the earlier trade mark has a very reduced visual impact and is not distinctive, it is very likely that it will not be pronounced at all and that consumers will naturally refer to that mark only by the element ‘ONE IT’ (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44). For the same reasons, and in order to avoid the repetition, the public will not repeat the verbal elements of the contested sign ‘ONE IT’ twice. Therefore, the signs are identical for a significant part of the public or at the very least aurally highly similar.

Conceptually, the signs coincide in the meanings of ‘ONE’ and ‘IT’ as previously indicated. This leads to a high degree of conceptual similarity, notwithstanding the non-distinctive or weak nature of ‘IT’, given that the concept of the clouds in the contested sign is also weak (or at the very least has a reduced impact) and that the verbal expression in the earlier mark is non-distinctive.

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, despite the presence of a weak or non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The services are partly identical and partly similar.

The signs are visually similar to an average degree, aurally at least highly similar, and conceptually similar to a high degree.

The degree of attention of the relevant public may vary from average to high.

The earlier mark as a whole has an average degree of distinctiveness that affords it a normal scope of protection in the assessment.

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.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Latvian trade mark registration No M 67 707. 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

Catherine MEDINA

Marcel DOLIESLAGER

Begoña URIARTE VALIENTE

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.