OPPOSITION No B 3 058 157

Florian Th. Stiegler, Marschnerstrasse 30, 81245 München, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 München, Germany (professional representative)

a g a i n s t

Blockhive OÜ, Hobujaama 4, 10151 Tallinn, Estonia (applicant), represented by Patendibüroo Turvaja OÜ, Liivalaia 22, 10118 Tallinn, Estonia (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 157 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 877 307 for the figurative mark , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 17 601 352 for the word mark ‘STI’. 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, inter alia, the following:

Class 9: Computer software, computer operating programs [recorded], computer program (recorded), computer programs (downloadable software), computer software (recorded).

During the proceedings the applicant made a limitation of the contested goods in Class 9. The opponent was informed and maintained the opposition.

The contested goods are, consequently, the following:

Class 9: Software for providing electronic commerce services and facilitating financial affairs, namely trading and arranging of virtual and digital currency.

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

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

The aforementioned contested goods are included in the broad category of the opponent’s computer software. Therefore, they are identical.

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 found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

STI
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 earlier mark is a word mark, in which case it is the word as such that is protected and not its written form (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, it is irrelevant whether the word mark is written in upper- or lower-case letters.

The Greek speaking part of the relevant public will perceive the earlier mark as the Latin transliteration of the Greek word στη (Sti) meaning inter alia in, at, by, on etc (when followed by a female noun). Another part of the public may perceive it as an abbreviation i.a. for Science, Technology and Industry, Scientific & Technical Information, Sexually Transmitted Infection or Speech Transmission Index (https://www.acronymfinder.com/STI.html). Since it has so many different meanings it is not possible to establish how the element ‘STI’ will be perceived and in fact if any of the meanings will be linked with that element at all. In any event, whichever way perceived, the combination of the three letters ‘STI’ has no relevant meaning for the goods at issue. Therefore, the element ‘STI’ is considered distinctive.

The contested mark is a figurative mark consisting of two blue circles divided in fourth parts by two white lines followed by a verbal element ‘eesty’ written in standard black lower case letters.

As regards the verbal element of the contested sign, it is meaningless for the majority of the relevant public. However, it is not excluded, as the applicant notes, that a part of the public will perceive it as a reference to the Estonian word ‘eesti’, meaning Estonia. If understood as such, this element is of a low distinctive character as it would refer to the origin of the relevant goods. Otherwise, it is distinctive.

The applicant claims that the figurative element of the contested sign together with the use of the colours in the sign will be perceived as the reference to Estonia, as blue, black and white are the colour of the national flag of Estonia. However, the Opposition Division finds that too many mental steps would be needed for such a perception. As such the figurative element is distinctive to a certain extent, given its stylization and colour.

While it is true that 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 (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37), however, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). In the case at hand the Opposition Division considers that the two blue circles, given their size, position and colours, and the verbal element of the contested sign are visually equally striking.

Visually, the signs coincide in the letters ‘ST’. However, they clearly differ in the remaining letters of the two signs as well as in the additional figurative elements of the contested sign.

Although the signs coincide in two letters, visually this is hardly perceivable. The coinciding letters are placed in the different positions in the two signs, namely as the first two letters in the earlier mark, followed by the last letter ‘I’ whereas in the contested sign they are in the third and fourth position as a part of the verbal element ‘eesty’.

Besides, since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar.

Therefore, the Opposition Division considers that the signs are overall not visually similar.

Aurally, the degree of similarity varies depending on the pronunciation of the two marks by the various parts of the public. The signs might be similar to a very low degree, for example, in case of the Polish-speaking consumer who will pronounce the earlier mark as ‘sti’ and the contested sign as ‘e:s-tɨ’ whereas the sound of the last letters ‘i’ and ‘y’ differs significantly.

For other parts of the public the signs are aurally similar to a below average degree, for example in case of the German- or Slovak-speaking public which will pronounce the earlier mark as ‘es-te:-i:’ and the contested sign as ‘e:s‑ti’, in case of the English-speaking public which will pronounce the earlier mark as ‘es‑ti:-ai’ and the contested sign as ‘e:sti’, and in case of majority of Spanish consumers, which will pronounce the earlier mark as ‘ese-te-i:’ and the contested sign as ‘e:sti’. It is noted that another part of Spanish consumers (rather small) may pronounce the earlier mark as ‘esti’, and in such case, the aural similarities will be higher.

The opponent claims that the two marks will be pronounced both as ‘esti’ and are therefore almost identical in sound. Bearing in mind the above, the Opposition Division does not agree with this claim and considering that the opponent did not present any further arguments or evidence in support of such claim, it must be set aside.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On the one hand the earlier mark will be associated with a concept (any of the above listed) whereas the verbal element of the contested sign will be meaningless for a significant part of the relevant public. On the other hand the verbal element of the contested sign may be perceived as a reference to Estonia by a part of the public as mentioned above. Since either one of the signs will not be associated with any meaning or the two signs will be associated with a dissimilar meaning, the signs are in any event conceptually not 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 goods 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

It should be recalled that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 61).

In the present case, the contested goods have been found identical to the opponent’s goods. The relevant public’s degree of attention may vary from average to high.

The signs coincide in two letters ‘ST’, which however are placed in the different positions. In addition, they will be not perceived as an independent element in the marks at issue. Due to this fact and to their differing stylisation along with the additional elements of the contested sign, the signs have significant visual and aural differences. In addition, the marks have no concept in common that would lead the public to associate one with the other.

It must be borne in mind that the fact that there is some coincidence between the signs does not necessarily lead to a finding of similarity. This is in particular the case when the overlapping part is not perceived independently within the overall impression of the marks. In the case at hand the coinciding letters will be not perceived as an independent element in the marks at issue, as the three letters that form the earlier mark and the five letters that form the verbal element of the contested sign are a part of another (possibly meaningful) element which will not be split in any way by the public.

There is no reason to believe that the public would dissect the verbal element of the contested sign to look for the letters ‘ST’ there. Hence, it is impossible to conclude that the consumers would not differentiate between the two signs.

Therefore, notwithstanding the identity found in respect of the goods in question, the Opposition Division finds that the differences between the signs prevail over their similarities and the contested sign does not bring to mind the earlier mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Konstantinos MITROU

Renata COTTRELL

Tu Nhi VAN

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.