OPPOSITION No B 3 056 511

Société Nouvelle d'Etudes d'Editions et de Publicité SNEEP, 11/13 Rue des petits hotels, 75010 Paris, France (opponent), represented by STRATO-IP, 63 boulevard de Ménilmontant, 75011 Paris, France (professional representative)

a g a i n s t

Elektrobit Automotive GmbH, Am Wolfsmantel 46, 91058 Erlangen, Germany (applicant), represented by Karsten Finger, Vahrenwaldstr. 9, 30165 Hannover, Germany (professional representative).

On 16/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 511 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 877 019 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 and services of European Union trade mark application No 17 877 019 (figurative mark ), namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on, inter alia, French trade mark registration No 4 260 063 (word mark ‘ARGUS 360’). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 4 260 063.

a) The goods and services

The goods and services on which the opposition is based are inter alia 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 or reproduction of sound or images; spools [photography]; tripods for cameras; filters for ultraviolet rays, for photography; viewfinders, photographic; stands for photographic apparatus ; washing trays [photography] ; shutter releases [photography] ; darkroom lamps [photography] ; drainers for use in photography; screens [photography] ; darkrooms [photography] ; cases especially made for photographic apparatus and instruments; filters [photography] ; cameras [photography] ; flash-bulbs [photography] ; carriers for dark plates [photography] ; shutters [photography] ; drying racks [photography] ; enlarging apparatus [photography] ; speed measuring apparatus [photography] ; glazing apparatus for photographic prints ; drying apparatus for photographic prints ; diaphragms [photography] ; magnetic data carriers, recording discs ; compact discs, DVDs and other digital recording media; data processing equipment, computers ; peripheral equipment for computers ; software; computer software, recorded ; computer operating system software; operating software for network access servers; computer software development tools; web site development software; computer software that provides web-based access to applications and services through a web operating system or portal interface; computer software for developing and operating computer networks and applications; computer software for use in data management; computer software platforms for computer applications and networks; computer programs [downloadable software]; downloadable software for modifying and transmitting audiovisual and video images and content; downloadable software for viewing a stream of images, audiovisual and video content and associated texts and data; Software for the transmission of images, audiovisual and video content and photographs; software enabling the realization of 360-degree photography; interactive photo and video equipment namely kiosks to take, download, edit, print and share digital images and videos; computer software packages; digital discs; compact discs [read-only memory]; CDs; DVDs; Interfaces for computers; Computer search engine software; scientific and computer digitalization apparatus and instruments; Data processing equipment, all of the aforementioned goods being related to the field of the automobile.

Class 38: Telecommunications, Secure data transmission services, Communication by means of computer terminals, Transmission of information by data transmission, Communication (transmission) and exchange of information via electronic or computerised means, in particular via interactive French videotex terminals and the Internet; Transmission of data contained in a data bank; Electronic mail; Transmission of data in electronic and information indexes via a telecommunications network, notably on the Internet; Establishing contact via telecommunications networks, in particular on the Internet; Providing of access to communication systems for exchanging electronic data, namely providing of access for establishing links between points of sale or rental via telecommunications and via global computer networks; Communications by computer terminals; Providing access to databases; Electronic exchange of information by telex, fax machines; Transmission of information contained in data banks and image banks, electronic information dissemination, notably for world-wide communications networks (such as the Internet) or private or restricted access networks; Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars; Rental services of time access to a computing data base; none of the aforesaid services being connected with the field of commodities and further none of the aforesaid services being connected with the fields of energy, transportation and emissions except in relation to road vehicles or other modes of transportation of passengers.

Class 42: Conversion and retrieval of computer data; Design, hosting, providing and operation of websites (maintenance) and creation of mobile applications; Design (development) of computer software; Production (design) of hypertext links on a telecommunications network, and in particular on the Internet; Inspection, control and verification of the state of equipment to assure the safety of vehicles before and/or after transport; All the aforesaid services relating to the field of cars.

The contested goods and services are the following:

Class 9: Software; Recorded computer programs; Computer programs [downloadable software]; All of the aforesaid relating to cyber security for vehicles; None of the aforesaid goods for use in the rail vehicle technology sector.

Class 38: Providing user access to computer programmes in data networks; Electronic transmission of computer programs via the internet; All of the aforesaid relating to cyber security for vehicles.

Class 42: Software creation; Software engineering; Software development; Software development; Preparation of computer programs for data processing; Installation and maintenance of computer programs; Implementation of computer programs in networks; Design services relating to computer hardware and to computer programmes; Testing of computer programs; Updating of computer programs; Technical services for the downloading of software; Design, maintenance and up-dating of computer software; Computer programming services for electronic data security; Consultancy in the field of security software; All of the aforesaid relating to cyber security for vehicles.

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 of 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 opponent’s list 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 goods and 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 goods in Class 9

The contested goods Software; Recorded computer programs; Computer programs [downloadable software]; All of the aforesaid relating to cyber security for vehicles; None of the aforesaid goods for use in the rail vehicle technology sector are all included in the opponent´s goods software and therefore identical.

Contested services in Class 38

The contested Providing user access to computer programmes in data networks; All of the aforesaid relating to cyber security for vehicles overlap with the opponent´s Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars and therefore identical. Providing access to a worldwide computer network; All the aforesaid services relating to the field of cars and are therefore identical.

The contested Electronic transmission of computer programs via the internet; All of the aforesaid relating to cyber security for vehicles overlap with the opponent´s Secure data transmission services; all the aforesaid services relating to the field of cars and therefore identical. All the aforesaid services relating to the field of cars and are therefore identical.

Contested services in Class 42

The contested services Software creation; Software engineering; Software development; Software development; Preparation of computer programs for data processing; Installation and maintenance of computer programs; Implementation of computer programs in networks; Design services relating to computer hardware and to computer programmes; Testing of computer programs; Updating of computer programs; Technical services for the downloading of software; Design, maintenance and up-dating of computer software; Computer programming services for electronic data security; Consultancy in the field of security software; All of the aforesaid relating to cyber security for vehicles are at least similar to the opponent’s services conversion and retrieval of computer data; all the aforesaid services relating to the field of cars as they originate from the same companies, are directed at the same consumers and share the same distribution channels. All the aforesaid services relating to the field of cars as they originate from the same companies, are directed at the same consumers and share the same distribution channels.

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 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, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

ARGUS 360
Earlier trade mark	Contested sign

The relevant territory is France.

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 element ‘ARGUS’ included in both signs has no meaning for the relevant public and is, therefore, distinctive. Contrary to the views of the applicant the consumer clearly sees that verbal element in the contested sign and not a device plus the letters ‘RGUS’.

The number ‘360’ of the earlier mark will, by the majority of the public, be perceived as referring to the 360° of a circle and meaning: ‘all round, comprehensive’. It is a non-distinctive element, as it will be associated with respect to the relevant goods and services as the provision of an all-round comprehensive service or goods which can be used in all types of eventualities.

The verbal element ‘CYBER SECURITY’ of the contested sign will be associated with the same meaning as in English, as the French expression for internet security is ‘cyber-sécurité’. Bearing in mind that the relevant goods and services are IT-related this element is non-distinctive for these goods and services.

The slightly stylised verbal element ‘ARGUS’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in ‘ARGUS’, despite the slight stylisation of that verbal element in the contested sign, in particular in the use of the blue dot in the middle of the letter “A”, which is considered to be weak. They differ in the non-dominant and fully descriptive verbal element ‘CYBER SECURITY’ in the contested sign as well as the non-distinctive number ‘360’ of the earlier mark.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‛AR-GUS’, present identically in both signs. The pronunciation differs in the sound of the letters ‘CYBER SECURITY’ in the contested sign and the numeral ‘306’ of the earlier mark, which have no counterparts in the respectively other sign and are considered to be non-distinctive; the differing element in the contested sign is not dominant.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the words ‘CYBER SECURITY’ in the contested mark will evoke a concept, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate the commercial origin. This applies by analogy to the numeral ‘360’ in the earlier mark. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 goods and 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).

In the present case, the goods and services are identical or similar. The signs are visually as well as aurally highly similar while a conceptual comparison is not possible. The level of attention varies from average to high and the earlier mark has an average degree of distinctiveness.

The earlier mark’s distinctive verbal element ARGUS is included in the beginning of the contested mark. Therefore, this part of the conflicting marks is identical.

Taking into account all the relevant circumstances of the case, the differences between the marks, which result from the non-dominant and non-distinctive element ‘CYBER SECURITY’ of the contested sign and the non- distinctive element ‘360’ of the earlier sign are not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods and services come from the same undertaking or at least from economically-linked undertakings.

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).

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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ARGUS. In support of its argument the applicant refers to several trade mark registrations in the European Union.

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 ARGUS. Under these circumstances, the applicant’s claims must be set aside.

There is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 260 063. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right ‘ARGUS 360’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Konstantinos MITROU

Lars HELBERT

Tobias KLEE

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.