OPPOSITION No B 3 072 252

Cegeka Groep, Kempische Steenweg 307, 3500 Hasselt, Belgium (opponent), represented by Gevers, Brussels Airport Business Park Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Seqera Labs, S.L., C/ Ramon Turró 142, 08005 Barcelona, Spain (applicant), represented by Ingenias, Av. Diagonal, 514 – 1º, 08006 Barcelona, Spain (professional representative).

On 30/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 252 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services (Class 42) of European Union trade mark application No 17 958 404 for the figurative mark . The opposition is based on European Union trade mark registration No 9 003 336 for the word mark ‘CEGEKA’ and on Benelux trade mark registration No 603 351 for the figurative mark . The opponent invoked Article 8(1)(b).

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.

In the case at hand the proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s aforementioned European Union trade mark registration.

a) The goods and services

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

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; conducting research into and development of new technologies; design, development, writing, updating, implementation, maintenance and upgrading of software and software packages; design and development of computer hardware; computer programming; information and consultancy on the use and application of computer hardware and computer software, including technical consultancy in relation to the use and application of computer hardware and computer software, including via helpdesks; rental of computer hardware and computer software; providing automation consultancy to businesses; consultancy in the ICT field; website development; hosting of computer sites (websites); consultancy in the field of automation, on computers, computer peripheral devices, computer software and development of websites and software for work platforms and on computer system management; IT consultancy; consultancy and development of communication technologies; technical research and design of computer software and hardware for data transmission via telecommunication networks for users; services of IT experts.

The contested services are the following:

Class 42: Design services; IT services; Testing, authentication and quality control; Science and technology services.

Considering that the opponent’s list of services includes the term ‘including’, an interpretation of the list’s wording is required to determine the scope of protection of the opponent’s services.

This term indicates namely that the specific 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).

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.

The contested science and technology services; IT services; design services are identical to the opponent’s scientific and technological services; IT consultancy; services of IT experts; design and development of computer hardware and software either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or are included in the contested services.

The contested testing, authentication and quality control is worded broadly and, depending on its exact nature, could be related to different fields, inter alia, to IT field. The contested testing is a process used to identify characteristics or problems. The contested authentication is the action of establishing something as genuine or valid. The contested quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. Consequently, the said contested services and the opponent’s information and consultancy on the use and application of computer hardware and computer software are considered at least similar since they can have the same providers, relevant public and distribution channels.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to identical or similar are directed at the public at large (e.g. IT services) as well as 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 services purchased.

c) The signs

CEGEKA
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 verbal elements ‘CEKEGA’ and ‘seqera’ of the two marks have no meaning in the relevant territories.

On the other hand, the element ‘labs’ of the contested sign is likely to be understood as the abbreviation of ‘laboratories’, a plural form of the English word ‘laboratory’ meaning ‘a room or building equipped for scientific experiments, research, or teaching’ (see e.g. Oxford Online Dictionaries). This meaning will be perceived not only by the English-speaking part of the relevant public but also by at least a part of the remaining relevant public, given the similar equivalents in the relevant languages (such as ‘laboratorio’ in Spanish; ‘laboratório’ in Portuguese, ‘laboratoire’ in French, ‘laboratorio’ in Italian’, ‘laboratorium’ in Polish, ‘laboratórium’ in Slovak, ‘laboratorija’ in Lithuanian, ‘laboratorija’ in Latvian, ‘lab’ or ‘laboratoorium’ in Estonian, to name but a few). In the context of the relevant services, at least for the services of testing, authentication and quality control and science and technology services, it may refer to the place where these services originate or are carried out. Consequently, the element ‘labs’ has a very limited degree of distinctiveness.

Considering that the likelihood of confusion is greater in case the differing elements are weak respectively non-distinctive, the Opposition Division finds it appropriate to assume that the verbal element ‘labs’ of the contested sign is non-distinctive in relation to all the services at issue and for the whole relevant public. This is the most advantageous scenario for the opponent.

The earlier mark consists of one word. In case of word marks, it is the word as such that is protected. Therefore, it is irrelevant if the mark is written in upper- or lower-case letters as far as it does not depart from the usual way of writing, which is not the case at hand.

The contested mark is a figurative mark in which none of the elements could be considered clearly more dominant than other elements. Albeit the element ‘seqera’ is in bold, the contrast to the following element ‘lab’ makes the two elements equally eye catching. The figurative element preceding the verbal element ‘seqera’ is a composition of lines and dots, as such it is rather fanciful.

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), 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). The Opposition Division considers that this is the case in the present proceedings, where the figurative element forms, together with the verbal elements, its co-dominant elements.

Visually, the signs coincide in their vowels ‘*E*E*A’ and differ in their consonants ‘C*G*K*’ and ‘s*q*r*’ as well as in the remaining elements and the stylisation of the contested sign. The earlier mark and the first verbal element of the contested sign also have the same number of letters.

Contrary to the opponent’s view the Opposition Division does not consider the letters ‘c/g/k/’ visually similar to the letters ‘s/q/r’. Even if all written in lower-case typeface, the differences are clear. The letters ‘g’ and ‘q’, both placed in the less eye-catching middle part of the sign, also differ and this despite their similar upper part. Their lower parts of are clearly different.

The General Court has held that 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 have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (see by analogy judgments of 25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The verbal element ‘labs’ in the contested sign is non-distinctive and has minimal impact on differentiating between the signs. Yet, the above mentioned different consonants, the figurative element together with the overall graphical representation of the contested sign contribute to the significant visual differences between the two signs.

Therefore, the signs are visually dissimilar.

Aurally, the signs first syllables ‘CE’ and ‘SE’ will be pronounced similarly in some of the relevant languages such as French. However, for the majority of the relevant public the first syllables as well as the other two syllables of the verbal elements ‘CEGEKA’ and ‘SEQERA’, when pronounced, will produce different sounds. For example in Spanish /the-che-ka/ vs /se-ke-ra/, in Slovak or German /tze-ge-ka/ vs /se-ke-ra/. In French, apart from the similar pronunciation of the first syllables, the differences are in the remaining two, which will be pronounced as /sche-ka/ and /ke-ra/. The second verbal element ‘labs’ in the contested sign is non-distinctive and as such has minimal impact on differentiating between the signs, also from the aural point of view.

Taking into account the foregoing, the signs are aurally similar to a low degree for a part of the relevant public such as French-speaking consumers.

Conceptually, neither of the signs has a meaning as a whole. Although the verbal elements ‘labs’ will evoke a concept, as it is non-distinctive, it cannot indicate the commercial origin. The figurative element of the contested sign may be or may be not perceived as having a concreate concept – a composition of lines and dots.

In the latter case, it is considered that neither of the signs has a meaning for the public in the relevant territory. Therefore the conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. Otherwise, i.e. in case that the figurative element will be perceived as having a concept, the contested sign will convey a certain meaning while the earlier mark has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

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 services have been found identical or similar to the opponent’s services. The relevant public’s degree of attention may vary from average to high.

The Opposition Division has assumed in section d) of this decision that the earlier mark enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, however, the signs share only three letters ‘*E*E*A’ and differ in all the remaining letters/elements as well as in the stylisation of the contested sign. Hence, due to the different consonants together with the figurative element and stylisation of the contested sign, the signs have significant visual and aural differences. It is not to be forgotten, that the relevant public will not proceed to analyse each letter of the sign, but will rather focus on the overall impression given. Consequently, the identity of some letters cannot conclusively lead to likelihood of confusion.

For part of the public, such as French-speaking, there are certain phonetical similarities, yet those are confined only to the sign’s first syllables. Albeit the earlier mark and the first verbal element of the contested sign consisting equally of three syllables, the sounds of the remaining two syllables when pronounced are clearly different. Hence, in the overall impression of the signs, the mere coincidence in the first syllable and the three vowels is not sufficient to lead to the conclusion that there is a relevant similarity between the signs. The differences are even more striking in other languages of the relevant territory, where even the sound of the first syllables differ. In addition, the marks have no concept in common that would lead the public to associate one with the other.

Therefore, notwithstanding the identity or similarity found in respect of the relevant services, 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.

For the sake of completeness it is noted that this absence of a likelihood of confusion equally applies in case the element ‘labs’ is distinctive. This is because, as a result of the additional distinctive element in one of the marks in comparison, the signs will be even less similar.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the submitted evidence of extensive use.

The opponent has also based its opposition on the aforementioned Benelux trade mark registration No 603 351 for the figurative mark and for the following goods and services:

Class 9: Electronic apparatus; apparatus for recording, transmitting and reproduction of sound or images; magnetic data carriers, recording discs; data processing apparatus, computers and their peripherals, software and software packages.

Class 16: Printed publications regarding informatics, software and software applications.

Class 42: Programming for electronic data processing; rental of computers, data processing apparatus and software.

That mark contains the same verbal element as the earlier mark analysed above, which is placed underneath an additional figurative element – a stylised letter ‘C’ within a blue square. The figurative elements together with the overall stylisation of the mark contributes to the further differences between the signs. The relevant territory in case of this earlier mark is Benelux. As already stated above, even for the French-speaking public the differences between the verbal elements ‘cegeka’ and ‘seqera’ prevail over their similarities. This applies even more for the remaining relevant public in Benelux as for those the signs are aurally dissimilar. Considering the overall composition of the two signs, the contested sign does not bring to mind the earlier mark . Therefore, no likelihood of confusion exists with respect to those two signs either.

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

Claudia MARTINI

Renata COTTRELL

Astrid Victoria WABER

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.