OPPOSITION No B 3 049 156

Magnisoftware - Sistemas De Informação, LDA., Rua Bernardim Ribeiro, 2º Direito, 2760-016, Caxias, Portugal (opponent), represented by Manuel Cunha Ferreira, Dina Maria Martins Pereira Soares, Maria Joana Marques Galvão Fialho Pinto Trindade Veiga, Avenida 5 de Outubro, 146-7º, 1050-061, Lisboa, Portugal (professional representatives)

a g a i n s t

Maik Heinzig, Santa Eulalia del Rio, Spain (applicant), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft mbB, Krenkelstr. 3, 01309 Dresden, Germany (professional representative)

On 25/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 156 is partially upheld, namely for the following contested goods and services:

Class 9: Photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cash registers; calculating machines; teaching apparatus and instruments; data processing equipment and computers; magnetic data carriers; recording discs.

Class 28: Games and playthings.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

2. European Union trade mark application No 17 772 823 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 772 823 for the word mark ‘magnussoft’. The opposition is based on Portuguese trade mark registration No 362 278 for the word mark ‘MAGNISOFT’. 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: Programs for computers (software - recorded).

Class 42: Computer programming.

The contested goods and services are the following:

Class 9: Scientific, photographic, cinematographic, optical, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers.

Class 28: Games and playthings; gymnastic and sports articles, not included in other classes.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

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

The contested photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers; cash register; calculating machines; teaching apparatus and instruments are similar to the opponent’s programs for computers (software - recorded). These goods are complementary; they target the same consumers and are distributed through the same commercial channels. In addition, some of the above goods, namely data processing equipment and computers, may be produced by the same undertakings as the opponent’s products.

Data processing equipment, computers, cash registers and calculating machines and teaching apparatus are kind of programmable electronic devices designed to perform complex operations such as classifying, calculating, summarizing, and storing data. In order to be able to fulfill their main functions they need corresponding software especially developed for them, which may be purchased independently by the same public. Photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images also process data.

The contested magnetic data carriers, recording discs are similar to a low degree to the opponent´s programs for computers (software – recorded). They are complementary goods, which may be also produced by the same companies.

The rest of the contested goods in this class, namely scientific, optical, measuring, signalling, checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; mechanisms for coin-operated apparatus are dissimilar to all the opponent´s goods and services. Following their designation, these goods are various apparatus and instruments serving different purposes from the opponent’s programs for computers (Class 9) or computer programming (Class 42). For instance, the apparatus intended to be used in relation with electricity encompass various tools and equipment in order to be able to fulfil their functions. Also, the contested measuring, detecting and monitoring instruments are instruments used to measure the quality, value, or effect of something, as well as to identify characteristics or problems in a process. By contrast, the opponent’s goods and services are computer programs and their development, which are essentially routines and symbolic languages that control the functioning of the hardware and direct its operation. The mere fact that a specific kind of software may be an integral part of the contested goods is not sufficient to find similarity with the opponent’s goods or services, as such integrated software is not usually purchased independently. The opponent´s goods and services are manufactured and offered by specialised entities in the IT field. Even belonging to the same class in the Nice classification, they differ from the contested goods in their natures, purposes and methods of use. They target different consumers and are neither in competition, nor are complementary.

Contested goods in Class 28

The contested games and playthings are similar to the opponent´s programs for computers (software - recorded). These goods are complementary, target the same public and are usually produced by the same or economically linked undertakings. They are also distributed through the same commercial channels.

The contested gymnastic and sport articles, not included in other classes are dissimilar to all of the opponent´s goods and services. The sport articles include different objects and accessories used in physical activities, competitions or sport games. It follows that these goods have different nature, serve different purposes and target different consumers. They do coincide neither in their distribution channels, nor in their producers. Moreover, these goods cannot be in competition with any of the opponent’s goods and services, neither can they be complementary.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; design and development of computer hardware and software are similar to the opponent´s computer programming. These services have the same nature, are directed to the same pubic and are rendered 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 goods and services found similar to varying degrees target professionals with specific knowledge and expertise in these areas (e.g. data processing equipment; design and development of computer hardware and software), as well as public at large (e.g. games; recording discs).

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

c) The signs

MAGNISOFT	magnussoft
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 conflicting signs are one word marks and therefore the word as such is protected, not its written form. It is irrelevant whether the word mark is depicted in lower or upper case letters, or in combination thereof.

Although consumers in general perceive trade marks as a whole, they tend to break verbal elements down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In principle, in the present case, both signs are meaningless as a whole and do not convey any clear concept for the Portuguese public. They are not used in common parlance and will be seen as fanciful foreign terms, which convey no information as regards the relevant goods and services and their characteristics. Therefore, both signs are normally distinctive taken as a whole.

Even if upon a detailed analysis of the separate elements of the words and the goods and services at issue it might be inferred that ‘soft’ (the second part in both signs) stands for software, which in this case would be weak, and magni/magnus (the initial parts of the signs) allude to greateness, such conclusion does not stem directly from the perception of the words as a whole. When analysing a sign, it is the immediate impression created in the consumers that is of relevance and not possible findings after a detailed consideration, which goes far beyond the usual perception of a mark. The way an invented word is or could have been created could only be relevant if it is apparent to the relevant consumers and they therefore see a concept behind the word. The case at hand does not show such characteristics.

Nevertheless, even if the consumers see the above explained associations of the elements, to the extent both signs would evoke the same associations; their distinctiveness will be on equal footing.

Visually the signs coincide in the letters ‘magn*soft’. They differ only in two letters, namely ’i’ versus ‘u’ and ‘s’ without counterpart in the earlier mark, depicted in the middle of the signs between the other identical strings of letters.

Aurally, the pronunciation differs in one sound only, since the double consonant ‘ss’ does not result into a different sound.

Therefore, contrary to the applicant´s opinion and despite the possibly reduced distinctiveness of some of the elements as discussed above, the Opposition Division finds the signs visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content that might be conveyed by the marks. Since to the extent both signs suggest some associations, they will be the same. For the respective part of the public the signs will be conceptually identical. For the rest of the public, who will not see any meaning in the signs, they will be meaningless and therefore for this part of the public the conceptual comparison does not influence the outcome.

As the signs have been found similar in at least two aspects 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. As already stated in section c), 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, contrary to the applicant´s opinion, the distinctiveness of the earlier mark as a whole must be seen as normal, despite the possibility that some might link separate part(s) of it to weak associations.

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).

The goods and services are partly similar to varying degrees and partly dissimilar. They are directed at the public at large and at professionals in different areas, as commented above. The degree of attention will consequently vary from average to high.

The earlier mark is of a normal distinctiveness.

As explained in section c) of this decision, the signs are considered visually and aurally similar to a high degree. For part of the public they are also conceptually identical, while for another part the conceptual comparison is not possible and does not influence the outcome. Consequently, this part of the public will not be able to rely on any conceptual references in order to safely distinguish between the marks.

The public is usually less aware of differences between longer signs. The earlier mark consists of nine letters, the contested one of ten where two of them are a double ‘ss’. Consequently the conflicting signs are relatively long signs. The only different sound between them is a vowel (‘i’ versus ‘u’) placed in the middle between identical strings of letters. The double consonant in the contested sign does not produce a different sound and does not contribute to a particularly notable visual difference either, especially due to its position in the sign. Upon taking also into account 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), the Opposition Division finds that the differences in two letters and one sound only are not enough for the consumers to safely distinguish the marks, neither visually, nor aurally. This is due to the less prominent positions of the different letters and sound where they can be easily overseen and overheard. 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. Consequently, it cannot be excluded that consumers relying on their imperfect recollection of the signs, may oversee these differences having a non-prominent position in the sign.

This goes true also for the professional part of the public, who despite paying 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).

In view of the foregoing, the differences between the signs are clearly not sufficient to offset their overwhelming similarities and the Opposition Division finds that there is a likelihood of confusion on the part of the public even for the goods found to be similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 362 278. It follows that the contested trade mark must be rejected for all the contested goods and services found to be similar to varying degrees.

The rest of the contested goods 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 goods cannot be successful.

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

Manuela RUSEVA

Meglena BENOVA

Teodora Valentinova TSENOVA PETROVA

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.