OPPOSITION No B 3 071 858

CTT Computertechnik AG, Rosenheimer Straße 141 H, 81671 München, Germany (opponent), represented by Wirth Rechtsanwälte, Augustaanlage 32, 68165 Mannheim, Germany (professional representative)

a g a i n s t

Ervin Wacník, Přívrat č. p 94, 560 02 Přívrat, Czech Republic (applicant), represented by Daněk & Partners, Vinohradská 17, 120 00 Prague 2, Czech Republic (professional representative).

On 24/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 858 is partially upheld, namely for the following contested goods and services:

Class 9: Electronic data and databases; information products on electronic, data information and telecommunication networks of all kinds; computers software and computer hardware; periodicals and books in electronic form; data or record storage devices, including audio cassettes, recorded and unrecorded; electronic, data or information networks; interactive and graphic programs; software, in particular for data transfer systems; decoding systems; payment cards or magnetic and chip cards for use in banking, insurance, the services and business communication; international payment cards; electronic currency media; chips; multimedia information catalogues; audiovisual programs and works; CD discs; computer software; software; computing, communications or information technology hardware; electronic databases and database products; information and recordings on media other than paper media; software and hardware related thereto; electronic, data or information or communications or computer networks, including individual components and spare parts therefor; multi-media applications; computer games; electric or electronic puzzles included in this class.

Class 38: Telecommunications; communication via terminals or computers; computer transmission of mail or images; communications and transactions on networks; wire service; remote transmission of images and video images; operation of data networks; operating public mobile radio-telephone networks; telecommunications engineering consultancy; exchange, acquisition and dissemination of information and messages via telecommunications networks or data networks or computer, information or communication networks or electronic technology or via satellite or cable; dissemination of printed matter and books via computer, data, electronic, telecommunications or information networks; information and telecommunications on the internet included in this class, including operating electronic bulletin boards, discussion groups and forums and providing access to online information and databases; voice-mail services; telecommunication services, including direct interconnection of local client fixed networks with mobile telephone networks; short message services; teletext and related services; providing information (information agencies); communications consisting of exchanging, disseminating, acquiring and providing information and messages via telecommunications networks; operating information and communications networks; operation of internet search engines; rental of telecommunication equipment and apparatus, including telephones; message sending services; transmission of data and of information; access and connection to data and information networks and the internet; communications via the internet, external and internal networks and other electronic means; telecommunications technologies (voice over IP, wireless technologies).

Class 42: Consultancy, assistance, analysis, design, evaluation and programming relating to computer software, firmware, hardware and information technology; consultancy relating to assessing, selecting and implementing computer software, firmware, hardware, and information technologies and data processing systems, legal affairs, information technologies and intellectual property, including via telecommunications networks, supplied online, via the internet and World Wide Web,; hosting web sites; web design; research services; encoding and decoding of security systems (computer software design); consultancy in the field of the application of computing equipment, in the field of information technology; creation of virtual/computer 3D animations and models, and information technology; design and implementation of automated management systems; programming; computer network design; software licensing and rental of software; installation, repair, maintenance and servicing of software; creation of interactive applications enabling the transmission and creation of graphic images via an internet network; computer programming; software, namely design, data conversion of computer programs and data (not physical conversion); conversion of data or documents from physical to electronic media; creation and maintenance of websites for others; hosting websites; installation of computer software; computer system design; programming of internet database systems and internet applications; creating web presentations and web server solutions; updating and maintenance of computer software; rental of access time to computer databases; duplication of computer programs; technical studies in the field of computers and computer programs; research, development and design of systems for electronic commerce, including software and hardware therefor; expertise in the field of electronic commerce and information technology; programming of multimedia applications; creation of interactive and graphic programs; computer animation and visualisation; graphic design; implementation, updating, designing, structuring and programming or otherwise creating databases, other data systems and applications for the processing thereof, including providing access thereto and the installation, implementation, updating and maintenance thereof; design, structuring and programming or other creation of internet or intranet pages and bulletin boards (webpages and websites) and internet or intranet applications; hosting (providing space for) internet or intranet information, pages and bulletin boards (webpages and websites); hosting (providing space for) internet and intranet applications; data conversion of computer programmes, data or other information in electronic format from various formats to other formats; conversion of documents, data or other information from physical to electronic media; backing up data and information by electronic and computer means and via electronic mail; consultancy in the field of computer equipment and information technology; consultancy in the field of computer equipment and information technology.

2. European Union trade mark application No 17 941 014 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 some of the goods and services of European Union trade mark application No 17 941 014 for the figurative mark , namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on German trade mark registration No 30 757 621 for the word mark ‘CTT’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMIARY REMARKS

In the notice of opposition, the opponent indicates that the opposition is based on Article 8(1)(b) EUTMR. In its observations submitted on 21/02/2019, that is, after the end of the opposition period, it also claims that the opposition is based on Article 8(1)(a) EUTMR. The Opposition Division cannot accept this additional ground. Identification of grounds is an absolute admissibility requirement and all the grounds have to be clearly stated within the three-month opposition period.

The applicant claims that the earlier mark was not substantiated, since the opponent failed to prove the existence and validity of the earlier right on which the opposition is based.

However, in the notice of opposition of 20/12/2018, the opponent clearly stated that the necessary information for the earlier trade mark was imported from the relevant online official database, accessible through TMview, and that this source should be used for substantiation purposes.

As such, it complied with the substantiation requirements of Article 7(2) and (4) EUTMDR.

Therefore, this argument of the applicant must be rejected as unfounded and the Opposition Division will proceed with the examination of the opposition.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 30 757 621 for the word mark ‘CTT’.

The date of filing of the contested application is 10/08/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 10/08/2013 to 09/08/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 7: Vending machines.

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; magnetic data carriers, recording discs; coin-operated mechanisms; cash registers, calculating machines, data processing equipment, computers; fire extinguishers.

Class 38: Telecommunication services.

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

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 02/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 07/10/2019 to submit evidence of use of the earlier trade mark. Following an extension, the time limit expired on 07/12/2019. On 03/12/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

 Nineteen invoices dated between 30/07/2013 and 13/08/2018, addressed to customers in Germany (18 invoices) and Slovenia (one invoice). They refer to goods such as ‘CTT Zero One BTO-NAS’ (including installation and Firmware-Update), ‘CTT Zero One BTO-Server’ (including BIOS/Firmware-Update, BurnInTest and Testprotokoll) and ‘CTT Express-Vorabaustauschservice’.

 Printouts from the Wayback Machine of the opponent’s website www.ctt.de showing magnetic data carriers from different producers (not the opponent), tailor-made hardware and software such as PC’s, NAS (Network Attached Storage) and servers.

 Google analytics report for the period 01/01/2013 - 31/12/2018, showing the number of visitors to the website www.ctt.de.

 Undated brochure in German for the opponent’s company CTT Computertechnik AG, showing different IT services such as server, storage (NAS/SAN, Zero One Storage), workstation/PC and blade.

 Service information in English regarding ‘CTT exoCrypTTBackup’ which includes, inter alia, CTT Crypto Box for safe encryption and data transfer, CTT backup server, etc.

 ‘CTT Computertechnik AG Leading IT Hardware solutions’ brochure, in German.

 Two newspaper articles in German with translation into English. One, from www.it-management.today, is dated 19/09/2016 and entitled ‘CTT launches new certified storage server’. Another, from www.heise.de, is dated 16/09/2009 and entitled ‘CTT Computertechnik celebrates its 30th anniversary’. They state, inter alia: ‘CTT Computertechnik AG was founded in 1979 by Günther Kalina. Today, the company is one of the most important lT distribution companies in Germany. Since 2000 CTT cooperates with the leading data storage manufacturer open-E. Server business is the company’s core competency in operating a hardware shop for computer components. CTT’s key customers include the CERN research laboratory in Switzerland and well-known television and radio stations’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings – namely invoices – and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. Moreover, the opponent provided translation for the majority of the evidence such as press articles and service information.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices and brochures show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (EUR) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Therefore, the time of use is also demonstrated.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely invoices, brochures, press articles and service information, provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration and frequency of use. The mark ‘CTT’ is clearly depicted on the invoices in relation to servers. This also includes related IT services such as installation (assembly), updates etc. The invoices are evenly spread over the relevant period and refer to different parts of the territory (Hamburg, Berlin, Munich, etc.). Therefore, the use is widespread. Consequently, the use of ‘CTT’ on the invoices, together with the remaining evidence, is considered sufficient to prove its use as a trade mark.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

The evidence shows that the mark has been used in accordance with its function and as registered for at least some of the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

The evidence submitted proves use of the earlier mark for computer servers. These goods can be considered to form an objective subcategory of computers namely computer servers. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for computer servers.

The evidence also proves use of the earlier mark for the following technical support services: firmware-updates, BurnInTests and test protocols. These services can be considered to form an objective subcategory of scientific and technological services and research and design relating thereto namely technological services relating to computers. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for technological services relating to computers, namely updating and testing of software.

Even though the opponent uses its trade mark in relation to some other goods and services – such as data carriers, data encryption etc. – the Opposition Division cannot establish, without resorting to probabilities or suppositions, if there were any actual sales of these goods/services on the market, or to what extent these goods/services have been offered.

Considering all the above, the evidence shows genuine use of the trade mark for the following goods and services:

Class 9: Computer servers.

Class 42: Technological services relating to computers, namely updating and testing of software.

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 and for which genuine use has been proven are the following:

Class 9: Computer servers.

Class 42: Technological services relating to computers, namely updating and testing of software.

The contested goods and services are the following:

Class 9: Electronic data and databases; information products on electronic, data information and telecommunication networks of all kinds; computers software and computer hardware; periodicals and books in electronic form; data or record storage devices, including audio cassettes, recorded and unrecorded; electronic, data or information networks; interactive and graphic programs; software, in particular for data transfer systems; decoding systems; payment cards or magnetic and chip cards for use in banking, insurance, the services and business communication; international payment cards; electronic currency media; chips; multimedia information catalogues; audiovisual programs and works; films, exposed; musical works on data carriers; CD discs; computer software; software; computing, communications or information technology hardware; electronic databases and database products; information and recordings on media other than paper media; software and hardware related thereto; electronic, data or information or communications or computer networks, including individual components and spare parts therefor; multi-media applications; computer games; electric or electronic puzzles included in this class.

Class 38: Telecommunications; communication via terminals or computers; computer transmission of mail or images; communications and transactions on networks; wire service; remote transmission of images and video images; operation of data networks; operating public mobile radio-telephone networks; telecommunications engineering consultancy; brokerage in the field of telecommunications; exchange, acquisition and dissemination of information and messages via telecommunications networks or data networks or computer, information or communication networks or electronic technology or via satellite or cable; dissemination of printed matter and books via computer, data, electronic, telecommunications or information networks; information and telecommunications on the internet included in this class, including operating electronic bulletin boards, discussion groups and forums and providing access to online information and databases; voice-mail services; telecommunication services, including direct interconnection of local client fixed networks with mobile telephone networks; short message services; teletext and related services; providing information (information agencies); communications consisting of exchanging, disseminating, acquiring and providing information and messages via telecommunications networks; operating information and communications networks; operation of internet search engines; rental of telecommunication equipment and apparatus, including telephones; message sending services; transmission of data and of information; access and connection to data and information networks and the internet; communications via the internet, external and internal networks and other electronic means; telecommunications technologies (voice over IP, wireless technologies).

Class 42: Consultancy, assistance, analysis, design, evaluation and programming relating to computer software, firmware, hardware and information technology; consultancy relating to assessing, selecting and implementing computer software, firmware, hardware, and information technologies and data processing systems, legal affairs, information technologies and intellectual property, including via telecommunications networks, supplied online, via the internet and world wide web,; hosting web sites; web design; research services; encoding and decoding of security systems (computer software design); consultancy in the field of the application of computing equipment, in the field of information technology; creation of virtual/computer 3D animations and models, and information technology; design and implementation of automated management systems; programming; computer network design; software licensing and rental of software; installation, repair, maintenance and servicing of software; creation of interactive applications enabling the transmission and creation of graphic images via an internet network; computer programming; software, namely design, data conversion of computer programs and data (not physical conversion); conversion of data or documents from physical to electronic media; creation and maintenance of websites for others; hosting websites; installation of computer software; computer system design; programming of internet database systems and internet applications; creating web presentations and web server solutions; updating and maintenance of computer software; rental of access time to computer databases; duplication of computer programs; technical studies in the field of computers and computer programs; research, development and design of systems for electronic commerce, including software and hardware therefor; expertise in the field of electronic commerce and information technology; programming of multimedia applications; creation of interactive and graphic programs; computer animation and visualisation; graphic design; implementation, updating, designing, structuring and programming or otherwise creating databases, other data systems and applications for the processing thereof, including providing access thereto and the installation, implementation, updating and maintenance thereof; design, structuring and programming or other creation of internet or intranet pages and bulletin boards (webpages and websites) and internet or intranet applications; hosting (providing space for) internet or intranet information, pages and bulletin boards (webpages and websites); hosting (providing space for) internet and intranet applications; data conversion of computer programmes, data or other information in electronic format from various formats to other formats; conversion of documents, data or other information from physical to electronic media; backing up data and information by electronic and computer means and via electronic mail; consultancy in the field of computer equipment and information technology; consultancy in the field of computer equipment and information technology.

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 terms ‘in particular’ and ‘including’, used in the applicant’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 applicant’s and 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.

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 computers software and computer hardware; interactive and graphic programs; software, in particular for data transfer systems; decoding systems; chips; computer software; software; computing, communications or information technology hardware; multi-media applications; computer games; electric or electronic puzzles included in this class are all computer hardware or software, computer chips (as chips also include computer chips), applications, and computer systems. As such, they are if not identical then at least similar to the opponent’s computer servers. These goods at least share the same distribution channels, providers and relevant public.

The contested electronic data and databases; information products on electronic, data information and telecommunication networks of all kinds; electronic, data or information networks; electronic databases and database products; electronic, data or information or communications or computer networks, including individual components and spare parts therefor; periodicals and books in electronic form; multimedia information catalogues; audiovisual programs and works; information and recordings on media other than paper media; software and hardware related thereto are similar to the opponent’s computer servers. These goods have the same general purpose of storing data, information, etc. They target the same public through the same distribution channels and come from the same or economically linked undertakings.

The contested payment cards or magnetic and chip cards for use in banking, insurance, the services and business communication; international payment cards; electronic currency media share some commonalities with the opponent’s computer servers. These goods are offered to the end consumer through the same institutions, such as banks. They share the same purpose, namely for users to carry out their financial operations. Therefore, they are similar.

The contested CD discs; data or record storage devices, including audio cassettes, recorded and unrecorded are similar to a low degree to the opponent’s computer servers. These goods can coincide, at least, in their purpose, as they are for storing data, music, etc. Furthermore, their distribution channels can overlap.

The remaining goods, namely: films, exposed; musical works on data carriers have nothing in common with any of the opponent’s goods and services. Even though the purpose of some of them is data storage, these goods have clearly different commercial origins and distribution channels. Furthermore, they target a different public. They are neither complementary nor in competition. They are considered dissimilar overall.

Contested services in Class 38

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. A server is a piece of computer hardware or software that provides functionality for other programs or devices.

The contested telecommunication services allow people to communicate with one another by remote means.

There is a link between the opponent’s computer servers and the contested telecommunications; communication via terminals or computers; computer transmission of mail or images; communications and transactions on networks; wire service; remote transmission of images and video images; operation of data networks; operating public mobile radio-telephone networks; telecommunications engineering consultancy; exchange, acquisition and dissemination of information and messages via telecommunications networks or data networks or computer, information or communication networks or electronic technology or via satellite or cable; dissemination of printed matter and books via computer, data, electronic, telecommunications or information networks; information and telecommunications on the internet included in this class, including operating electronic bulletin boards, discussion groups and forums and providing access to online information and databases; voice-mail services; telecommunication services, including direct interconnection of local client fixed networks with mobile telephone networks; short message services; teletext and related services; providing information (information agencies); communications consisting of exchanging, disseminating, acquiring and providing information and messages via telecommunications networks; operating information and communications networks; operation of internet search engines; rental of telecommunication equipment and apparatus, including telephones; message sending services; transmission of data and of information; access and connection to data and information networks and the internet; communications via the internet, external and internal networks and other electronic means; telecommunications technologies (voice over IP, wireless technologies). They are similar because they are complementary and, even though their natures are different, their purposes and distribution channels are the same.

However, there is no such link in relation to the contested brokerage in the field of telecommunications. These are intermediary services that refer to the choice of the telecommunication company that would provide services rather than to the services of providing access to data etc. via telecommunication channels. These services and the opponent’s goods and services are neither complementary nor in competition. They have different purposes and they have different distribution channels as their providers are distinct. Therefore, they are dissimilar to all the opponent’s goods and services.

Contested services in Class 42

All the contested services in Class 42 are at least similar to a low degree to the opponent’s technological services relating to computers, namely updating and testing of software, as all of them belong, or can belong, to IT services, which are rendered by IT companies. Therefore, these services at least coincide in the same distribution channels, targeted public and commercial origin.

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 to varying degrees 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

CTT
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 verbal element ‘CTT’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The verbal element of the contested sign, due to the way the first letter is depicted, can be perceived as ‘GTT’ or ‘CTT’. Either way, it is meaningless and distinctive for the relevant German public. The applicant claims that the abbreviation ‘CTT’ will be understood by the average consumer as ‘Computertechnik’ and ‘GTT’ will be perceived as an acronym of ‘Global Trade and Telecommunications’. However, as these are not official or commonly used abbreviations in Germany, it cannot be assumed that they are known by the relevant public.

The blue lines of the contested sign will be perceived as purely decorative elements and the attention of the public will be directed to the distinctive verbal element of the sign.

Visually, the signs coincide in the letters ‘TT’. The letters ‘C’ and ‘G’ are also very similar visually, especially considering the graphical depiction of the letter ‘G’, in which the bar of the letter ‘G’ is blurred by the figurative element and may go unnoticed by the relevant public.

However, they differ in the signs’ graphic depictions and their figurative elements. As regards stylistic elements, such as the colour or typeface of the letters, account must be taken 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the verbal element of the contested sign has a greater impact than the figurative element of blue lines.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CTT’ or ‘TT’, depending on the perception of the contested sign. The pronunciation differs in the sound of the letter ‛C’ v ‘G’, at least for part of the public.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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 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

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and professionals. The level of attention may vary from average to high.

The signs are visually similar to an average degree, aurally similar to at least an average degree and a conceptual comparison is not possible. The marks coincide in the sequence of letters/sounds ‘TT’ and, although for part of the public they possibly differ in the first letter/sound ‘C’/‘G’, these letters are visually very similar.

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).

Both signs consist of three letters and are considered short signs. While it is true that, as claimed by the applicant, in principle, the shorter the signs, the more easily the public is able to perceive all of their single elements, the differences between the signs are not sufficient to overcome their visual and aural similarities so as to exclude any likelihood of confusion between them. Moreover, in short signs, the beginning is no less important than the middle or the ending given that, in principle, none of the individual elements in so short a sign is to be attributed more weight than the other individual elements. It is the overall impression that has to be taken into account.

The applicant refers to previous decisions of the Office to support its respective arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office has a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 757 621.

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 varying degrees to those of the earlier trade mark.

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 services 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

Anna ZIOŁKOWSKA

Katarzyna ZANIECKA

Holger Peter KUNZ

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.