OPPOSITION No B 3 066 673

Portrait Software Limited, The Malthouse, 54 New Street, RG9 2BP Henley-on-Thames, United Kingdom (opponent), represented by CSY London, 10 Fetter Lane, EC4A 1BR London, United Kingdom (professional representative)

a g a i n s t

Pacific Future Shenzhen Co Ltd, Area W, 1^st Floor, Galaxy Innovate, The World Yanan Road, Meiban Avenue Bantian Street, Longgang District, Shenzhen, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 18/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 673 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programmes [programs], recorded; Computer operating programs, recorded; Computer software, recorded; Monitors [computer programs]; Computer programs [downloadable software]; Electronic publications, downloadable; Computer game software; Computer software applications, downloadable; Computers; Laptop computers; computer peripheral devices; Data processing apparatus; Monitors [computer hardware]; Portable media players.

Class 42: Computer programming; Computer software design; Updating of computer software; Consultancy in the design and development of computer hardware; Maintenance of computer software; Computer system analysis; Computer system design; Installation of computer software; Computer software consultancy; Computer technology consultancy; Providing information on computer technology and programming via a web site; Computer virus protection services; Off-site data backup; Electronic data storage; Recovery of computer data; Rental of web servers; Server hosting; Rental of computer software.

2. European Union trade mark application No 17 915 016 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 17 915 016 for the word mark ‘Portrait Future’. The opposition is based on European Union trade mark registration No 1 942 275 for the word mark ‘PORTRAIT’. The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Computer software for customer relationship management; electronic publications relating to customer relationship management software.

Class 41: Educational and training services in the field of computer software relating to customer relationship management; consultancy, information and advisory services relating to the aforementioned services.

Class 42: Computer software services relating to customer relationship management, namely computer programming; customer relationship management software design services; installation, maintenance and updating of computer software relating to customer relationship management; computer systems analysis; computer systems support services relating to customer relationship management; information and advisory services relating to the aforementioned services.

The contested goods and services are the following:

Class 9: Computer programmes [programs], recorded; Computer operating programs, recorded; Computer software, recorded; Monitors [computer programs]; Computer programs [downloadable software]; Electronic publications, downloadable; Computer game software; Computer software applications, downloadable; Magnetic data media; Computer memory devices; Magnetic encoders; Computers; Laptop computers; Computer peripheral devices; Data processing apparatus; Monitors [computer hardware]; Encoded key cards; Encoded magnetic cards; Electronic tags for goods; Portable media players; smart glasses.

Class 42: Computer programming; Computer software design; Updating of computer software; Consultancy in the design and development of computer hardware; Maintenance of computer software; Computer system analysis; Computer system design; Installation of computer software; Computer software consultancy; Computer technology consultancy; Providing information on computer technology and programming via a web site; Computer virus protection services; Off-site data backup; Electronic data storage; Recovery of computer data; Rental of web servers; Server hosting; Rental of computer software; Dress designing.

An interpretation of the wording of the list of the opponent’s services is required to determine the scope of protection of these services.

The term ‘namely’, used in the opponent’s list of 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 services specifically listed.

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

The contested computer programmes [programs], recorded; computer operating programs, recorded; computer software, recorded; monitors [computer programs]; computer programs [downloadable software]; computer game software; computer software applications, downloadable overlap with the opponent’s computer software for customer relationship management, insofar as they are all software. Therefore, they are identical.

The contested electronic publications, downloadable overlap with the opponent’s electronic publications relating to customer relationship management software. Therefore, they are identical.

The contested computers; laptop computers; computer peripheral devices; data processing apparatus; monitors [computer hardware]; portable media players are at least similar to a low degree to the opponent’s computer software for customer relationship management, because they may be complementary. Furthermore, at least some of the goods can be sold through the same distribution channels, target the same end users, and are often produced by the same undertakings.

The contested magnetic data media; computer memory devices; magnetic encoders; encoded key cards; encoded magnetic cards; electronic tags for goods; smart glasses are data carriers, coding apparatus, key cards and magnetic cards that have been coded, and specific electronic devices with very particular purposes. The opponent’s goods and services are mainly specific computer software and electronic publications in Class 9, educational and training services and consultancy related thereto in Class 41 and computer software services and consultancy related thereto in Class 42. In view of the specificities of these goods and services, they share no relevant points in common. Therefore, they are dissimilar.

Contested services in Class 42

Computer system analysis is identically contained in both lists (some words in singular form and some in plural form).

The contested updating of computer software; maintenance of computer software; installation of computer software; computer virus protection services overlap with the opponent’s installation, maintenance and updating of computer software relating to customer relationship management. As an example, software maintenance would include virus protection. Therefore, they are identical.

The contested computer software consultancy; computer technology consultancy; providing information on computer technology and programming via a web site; consultancy in the design and development of computer hardware overlap with the opponent’s information and advisory services relating to the aforementioned services (in relation to, for example, computer systems analysis or computer software services relating to customer relationship management, namely computer programming). Therefore, they are identical.

The contested off-site data backup; electronic data storage; recovery of computer data overlap with the opponent’s computer systems support services relating to customer relationship management. Therefore, they are identical.

The contested computer programming includes, as a broader category, the opponent’s computer software services relating to customer relationship management, namely computer programming. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested computer software design; computer system design include, as broader categories, the opponent’s customer relationship management software design services. Since the Office cannot dissect ex officio the broader categories of the contested services, they are considered identical to the opponent’s services.

The contested rental of web servers; rental of computer software are similar to the opponent’s computer software services relating to customer relationship management, namely computer programming, because they are sold through the same distribution channels, target the same end users and are provided by the same undertakings.

The contested server hosting are similar to the opponent’s customer relationship management software design services, because they are sold through the same distribution channels, target the same end users and are provided by the same undertakings.

The contested dress designing is planning and making detailed drawings of dresses from which they can be made. The opponent’s goods and services are mainly specific computer software and electronic publications in Class 9, educational and training services and consultancy related thereto in Class 41 and computer software services and consultancy related thereto in Class 42. In view of the specificities of the goods and services in question they have no relevant points in common. Therefore, they are dissimilar.

2. 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 of the earlier mark target a professional public exclusively and the contested goods and services target the general and professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

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.

3. The signs

PORTRAIT	Portrait Future
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs’ common word, ‘PORTRAIT’, means, inter alia, ‘a painting, drawing, or photograph of a particular person’ in English (information extracted from Collins Dictonary at https://www.collinsdictionary.com/dictionary/english/portrait on 15/10/2019). It has no direct meaning in relation to the relevant goods and services and is, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The contested sign’s ‘Future’ means, inter alia, ‘the period of time that will come after the present, or the things that will happen then’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/future on 15/10/2018). Bearing in mind that the relevant goods and services are computer-related, this word is laudatory and, therefore, less distinctive, as it suggests that the goods and services are, for example, adapted to the future.

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. Therefore, ‘PORTRAIT’ will have more impact on the consumers.

Both signs are word marks. A word mark is a sign consisting entirely of letters, words or associations of words, written in printed characters in a normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). In the case of word marks, the word is, therefore, protected regardless of the typeface used and regardless of whether it is written in upper-case or lower-case letters.

Visually and aurally, the signs coincide in (the sound of) ‘PORTRAIT’. They differ in (the sound of) ‘FUTURE’, which, however, is laudatory and has less impact.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs differ merely in the laudatory element of the contested sign, they will be associated with a highly similar meaning. To that extent, the signs are conceptually similar to a high degree.

As the signs have been found similar in all aspects of the comparison, the examination of likelihood of confusion will proceed.

4. 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 invoked Article 8(5) EUTMR, which implies that the earlier mark has a reputation (as this is required for a claim to be successful on this ground), and that the earlier mark, therefore, enjoys enhanced distinctiveness. Nevertheless, the opponent 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 has no direct meaning for any of the goods and services in question from the perspective of the public referred to above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

As concluded above, the goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public for assessing likelihood of confusion is the professional public and the degree of attention may vary from average to high. The signs are visually, aurally and conceptually similar to a high degree.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign 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).

Even taking into account the professional part of the public and the high degree of attention paid in relation to at least part of the relevant goods and services, the differences between the signs are confined to one laudatory element, which has less impact on the consumers as explained above. This difference is, therefore, clearly not sufficient to exclude a likelihood of confusion between the signs, even for the goods found similar to a low degree, in view of the substantial similarities between them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical with, or similar to varying degrees to, those of the earlier trade mark.

The rest of the contested goods and 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.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 30/10/2018, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After an extension, this time limit expired on 04/05/2019.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

Chantal VAN RIEL

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.