OPPOSITION No B 3 064 619

Claro Soluciones Informáticas, S.L., C/ Conde Duque nº 1, 1º, oficina C, 28015 Madrid, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative)

a g a i n s t

Sujuwa Oy, Kaisaniemenkatu 4, FI-00100 Helsinki, Finland (applicant), represented by HH Partners Attorneys-At-Law, Ltd, Bulevardi 7, FI-00120 Helsinki, Finland (professional representative).

On 31/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 619 is partially upheld, namely for all the contested goods and services, except for the services in Class 35.

2. European Union trade mark application No 17 878 804 is rejected for all the contested goods and services in Classes 9 and 42 and may proceed to registration for the services in Class 35.

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 17 878 804 for the word mark ‘Klaro’. The opposition is based on Spanish trade mark registration No M 3 624 223 . 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 services on which the opposition is based are the following:

Class 42: Scientific and technological services, as well as research and design services in these areas; industrial analysis and investigations services; design and development of informatic and software equipment; software updates; accommodation of informatic sites; rental of computers, computers, web service; analysis of informatic systems; protection services with antivirus in informatics; data base recovery services; design and maintenance of software; consulting in computer matters; computer programming; duplication of programs.

The contested goods and services are the following:

Class 9: Interactive computer software enabling exchange of information; software for the analysis of business data; computer software designed to estimate resource requirements; computer software for application and database integration; computer software for authorising access to data bases; downloadable computer software for the management of data; downloadable computer software for the management of information; computer software for accessing, browsing and searching online databases; computer software for controlling and managing access server applications; software for searching and retrieving information across a computer network; computer software for creating searchable databases of information and data; software; interface software; application software; assistive software; industrial software; manufacturing software; adaptive software; authentication software; compiler software; decoder software; financial management software; e-commerce software; process controlling software; downloadable computer software; factory automation software; interactive computer software; computer application software; business technology software; business management software; database synchronization software; business intelligence software; integrated software packages; embedded operating software; database management software; computer software platforms; data compression software; control segment integration software; industrial controls incorporating software; computer-aided manufacturing software; communications processing computer software; industrial process control software; downloadable cloud computing software; computer software for accessing databases; computer software for database management; computer software for business purposes; computer software programs for database management; computer software supplied on the internet; computer software programs for spreadsheet management; computer software designed to estimate costs; computer software for producing financial models; computer software for processing market information; computer software to enable searching of data; computer software to enable retrieval of data; software for the processing of business transactions.

Class 35: Advertising; business management; business administration; searching for information, webpages and resources in information networks for others; on-line dissemination of references to commercial information; transmission of information on electronic product catalogues of third parties with electronic search features; administration of databases.

Class 42: Software design; software creation; computer software technical support services; development of computer database software; design of computer database software; development of computer software application solutions; creation, maintenance and adaptation of software; professional consultancy relating to computer software; programming of software for database management; professional advisory services relating to computer software; development of software for secure network operations; support and maintenance services for computer software; design and development of data retrieval software; design and development of computer database software; installation, maintenance and updating of database software; development and maintenance of computer database software; programming of software for e-commerce platforms; development of software for multimedia data storing and recalling; maintenance of software used in the field of e-commerce; design and development of software for importing and managing data; programming of computer software for reading, transmitting and organising data; programming of computer software for evaluation and calculation of data; design and development of computer software for reading, transmitting and organising data; design and development of computer software for evaluation and calculation of data; programming of operating software for accessing and using a cloud computing network; design and development of computer software for logistics, supply chain management and e-business portals; computer software rental services; providing online, non-downloadable software; software as a service [SaaS]; hosting computer software applications for others; rental of software for inventory management; programming of software for inventory management; providing temporary use of non-downloadable business software; providing online non-downloadable software for use in supply chain management; providing temporary use of on-line non-downloadable software for database management; providing temporary use of on-line non-downloadable software for inventory management; providing temporary use of on-line non-downloadable software for the transmission of information; providing temporary use of on-line non-downloadable software for the management of information.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

All the goods for which the applicant seeks protection are software products, in particular, specialised software for various commercial areas, applications, recorded software content, etc. All these goods are similar to the opponent’s computer programming, design and development of software equipment and software updates as they have a strong complementary connection. In particular, it is a well-spread practice on the market that manufacturers of any type of software will also commonly provide software-related services (e.g. as a means of keeping the system updated). In addition, although the nature of the goods and services is not the same, they coincide in relevant public and producers/providers.

Contested services in Class 35

The contested services in general are advertising, business management and administration, and office services as well as other tailored professional services in these or related fields. It is evident that these services have nothing in common with the opponent’s IT services in Class 42. Not only are they of different natures and purposes, these categories of services are provided to different groups of consumers using distinct distribution channels. While the opponent’s services imply expertise in a particular industrial, scientific or technological field (including the IT sector), the contested services target businesses that need a boost in their commercial development or alternatively support in maintaining leading positions. Consumers will rarely think of these services originating from the same commercial operator. In addition, they are neither complementary nor in competition. As a result, the contested services are considered dissimilar to the opponent’s services in Class 42.

Contested services in Class 42

The contested software design; software creation; computer software technical support services; development of computer database software; design of computer database software; development of computer software application solutions; creation, maintenance and adaptation of software; professional consultancy relating to computer software; programming of software for database management; professional advisory services relating to computer software; development of software for secure network operations; support and maintenance services for computer software; design and development of data retrieval software; design and development of computer database software; installation, maintenance and updating of database software; development and maintenance of computer database software; programming of software for e-commerce platforms; development of software for multimedia data storing and recalling; maintenance of software used in the field of e-commerce; design and development of software for importing and managing data; programming of computer software for reading, transmitting and organising data; programming of computer software for evaluation and calculation of data; design and development of computer software for reading, transmitting and organising data; design and development of computer software for evaluation and calculation of data; programming of operating software for accessing and using a cloud computing network; design and development of computer software for logistics, supply chain management and e-business portals are identical to the opponent’s design and development of informatic and software equipment, design and maintenance of software and consulting in computer matters, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The remaining contested services are IT services with focus on hosting, SaaS and rental/leasing of software. These services are similar to the opponent’s software design and development and computer programming since they will coincide in their end users and distribution channels. Furthermore, companies manufacturing software often ensure the commercial realisation of their final products, that is, provision of temporary use or rental for their customers, hosting of various databases and platforms, etc.

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, as well as at business customers with specific professional knowledge or expertise, in particular in the IT field.

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

	Klaro
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Despite the higher stylisation of the last letter, ‘O’, of the earlier mark, the relevant public will immediately be able to perceive the word ‘claro’, which will be further understood as an adjective designating meanings, inter alia, ‘clear, transparent’, ‘light’, ‘perceptible’, or as an adverb meaning ‘with no doubt’, namely an affirmative expression (information extracted from Real Academia Española on 19/07/2019 at https://dle.rae.es/?id=9PhBhLd). Nevertheless, the word is rather vague and bears neither descriptive nor allusive connotations that might immediately be perceived in relation to the services in question. Therefore, its degree of distinctiveness is normal.

The same finding applies to the figurative element of the sign, reminiscent of a sun, as it bears no relation to the services. However, account is taken of the fact 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. 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, even though consumers will not disregard the earlier mark’s fanciful depiction, they will still focus on the word that it embellishes.

As far as the verbal element ‘SOLUCIONES INFORMATICAS’ of the earlier mark is concerned (in English: ‘computer solutions’), given that the relevant services are technology and computer related, this expression will immediately be understood as a descriptive indicator of the nature of the services offered. Hence, the distinctiveness of this expression is at most weak in relation to the services.

The verbal element ‘Klaro’ of the contested sign will be perceived as a misspelt version of the word ‘claro’ explained above. Likewise, the distinctiveness of this element is considered normal for any of the goods and services concerned.

The verbal element ‘CLARO’ of the earlier trade mark together with its figurative element overshadow the other expression of the mark by virtue of their central position and size. Consequently, these elements are the visually dominant part of the earlier mark.

Visually, the signs coincide in the string of letters ‘*LARO’, forming most of the dominant verbal element in the earlier mark and most of the contested sign. They differ in their first letters, ‘C’ v ‘K’. They differ further in the additional figurative and verbal elements of the earlier mark, as referred to above, as well as in its stylisation having only a minor overall impact. Consequently, taken as a whole and following the above considerations with respect to the dominance and distinctiveness of the different elements, the signs are visually similar to an average degree.

Aurally, the signs entirely coincide in the pronunciation of their conflicting elements, ‘kla-ro’. Given the smaller size in which the additional expression of the earlier mark is depicted, in addition to its (at most) weak element, it is unlikely that the additional expression will be uttered by the consumers by aural reference to the sign. Consequently, for the vast majority of the public, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by their coinciding sound and given the limited, if not null, distinctiveness of the additional expression of the earlier mark, the signs are conceptually highly similar.

As the signs have been found at least similar in all three 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.

Despite making some vague allegations, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Moreover, even if that were the case, it did not submit any evidence to prove such 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 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 an at most weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar and partly dissimilar. They target the general public and professionals who will apply an average to high degree of attention when making a purchase. The earlier mark is deemed to enjoy a normal distinctiveness as a whole.

The signs are visually similar to an average degree, aurally identical (for the vast majority of the public) and conceptually highly similar. It is obvious that the differences between the signs are not sufficient to convey a different overall impression when consumers perceive them in the market in relation to identical and similar goods/services. Moreover, 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). As stated above, the one-letter difference at the beginning of the signs will not prevent consumers from linking the goods and services, as both signs, despite the misspelling, will eventually convey the exact same meaning to them.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No M 3 624 223. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services 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 and services cannot be successful.

For the sake of completeness, the proof of use submitted by the opponent is irrelevant for the outcome of the present proceeding. The opponent was under no obligation to provide such evidence, for example, as a response to the proof of use request made by the other party, and its content does not need to be addressed, nor is any analysis needed for the conclusion of these proceedings.

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

Sandra IBAÑEZ

Manuela RUSEVA

Sofia SACRISTAN MARTINEZ

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.