OPPOSITION No B 3 074 936

Eazy by Mazars, 15 Quai Lamandé, 76600 Le Havre, France (opponent), represented by Tesla, 250, rue Saint Jacques, 75005 Paris, France (professional representative)

a g a i n s t

Eazy Bi Sai, Avenu Iela 7 k-1, 2008 Jurmala, Latvia (applicant), represented by Ingrīda Kariņa-Bērziņa, Cobalt, Marijas iela 13 k-2, 1050 Riga, Latvia (professional representative).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 936 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 964 112 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 964 112 for the word mark ‘EAZYBI’. The opposition is based on French trade mark registration No 4 153 307 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

Class 9: Software, in particular software and accounting management software packages, financial management software.

Class 42: Development (design), installation, maintenance, updating or rental of software and software packages; computer programming; digitization of documents; software as a service [SaaS]; cloud computing; server hosting; electronic data storage; consultancy in the field of computers.

The contested goods and services are the following:

Class 9: Computer software that provides real-time, integrated business management intelligence by combining information from various data sources and presenting it as reports, charts, and dashboards in an easy-to-use user interface.

Class 42: Software as a service (SaaS) services featuring software that provides real-time, integrated business management intelligence by combining information from various data sources and presenting it as reports, charts, and dashboards in an easy-to-use user interface.

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 term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods 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).

Contested goods in Class 9

The contested computer software that provides real-time, integrated business management intelligence by combining information from various data sources and presenting it as reports, charts, and dashboards in an easy-to-use user interface is included in the broad category of the opponent’s software, in particular software and accounting management software packages. Therefore, they are identical.

Contested services in Class 42

The contested software as a service (SaaS) services featuring software that provides real-time, integrated business management intelligence by combining information from various data sources and presenting it as reports, charts, and dashboards in an easy-to-use user interface fall under the broad category of the opponent’s software as a service [SaaS]. These are, therefore, identical.

According to the applicant, the contested sign is registered and used in relation to a narrowly defined list of goods and services for a specialised software product for business intelligence that permits business executives to easily visualize data on the competitive landscape drawn from multiple sources, while the earlier mark is registered in respect of accounting software only. The latter is not exactly true, since in the opponent’s list the term ‘in particular’ appears in order to mention some products, but the list of goods concerns mainly software in general. However, the comparison of goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). For this reason, the applicant’s argument has to be set aside.

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 are directed at the public at large, namely for software, but the remaining goods and services at business customers with specific professional knowledge or expertise in, for example, the IT sector.

The degree of attention is considered to vary from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods and services.

In the present case, the above mentioned goods of the earlier mark target the general and professional public and the remaining goods and services target a professional public exclusively. 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).

c) The signs

	EAZYBI
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the letters ‘EAZY’, written in a fairly standard uppercase typeface of which the letters ‘EA*Y’ are in dark blue and the letter ‘Z’ in orange, the latter being placed inside a red square frame. Underneath appear the words ‘by MAZARS’, written in a much smaller, but also fairly standard, typeface. The contested sign is the word mark ‘EAZYBI’.

As regards the earlier mark the word ‘EAZY’ will be perceived by the French public as a meaningless term and it is normally distinctive for the relevant goods and services. Furthermore, ‘by MAZARS’ will be partially perceived by the French public as having a meaning, since ‘by’ is a basic English word meaning: ‘to indicate the person responsible for a creative work’ (information extracted from Collins English Dictionary on 30/03/2020, at https://www.collinsdictionary.com/dictionary/english/by). This word is followed by the word ‘MAZARS’, which is meaningless. Even though the word ‘MAZARS’ has no particular meaning, as it is preceded by the word ‘by’, the word ‘MAZARS’ is probably perceived as being the name of the undertaking (or surname of the person) who is the creator/producer/provider of the products/services under the name ‘EAZY’. These latter elements are distinctive, but the word ‘EAZY’ could be considered clearly more dominant (visually eye-catching), compared to these words ‘by MAZARS’, which are not only written in a very small typeface, but they are also placed in a more secondary position at the bottom part of the mark. The figurative element in the form of a red frame has no particular meaning for the relevant goods and services, but has merely a more decorative function.

As regards the word ‘EAZYBI’ of the contested sign it has no particular meaning and is distinctive for the relevant goods and services.

Visually, the signs are at least similar to the extent that they coincide in the letters ‘EAZY’ with the only difference that in the earlier mark these letters are written in a slightly different typeface, but this is, however, fairly standard and will anyway not take the consumer’s attention away from the word(s) it seems to embellish. The marks differ mainly in the words ‘by MAZARS’ and in the figurative element in the form of a red frame in the earlier mark, which are not shared by the contested sign, being, however, either less dominant or merely decorative. They also differ in the final letter ‘I’ of the contested sign which has no counterpart in the earlier mark, as in the earlier mark it is followed by the letter ‘y’.

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, because the public will more easily refer to the signs by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 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). This is also applicable in the case at hand with respect to the red frame in the earlier mark that is merely of a decorative nature.

Furthermore, 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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that at least the letters ‘EAZY’ coincide, is relevant for the comparison.

Therefore, taking all the aforementioned into account and also the distinctiveness and dominance issues, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides at least in the sound of the letters ‘EAZY’, present identically in both signs and being the most dominant element of the earlier mark. The earlier mark is pronounced as /E-A-ZY/ versus /E-A-ZY-BI/ of the contested sign. The marks differ in the syllable ‘BI’ of the contested sign which has no counterpart in the earlier mark. Furthermore, they also differ phonetically in the sound of the words /by/ /MA-ZARS/ of the earlier mark, which are less dominant and have less impact on consumers. However, these words will probably not even be pronounced by the majority of the consumers, due to their less dominant character. If these words are not pronounced the marks are phonetically similar to at least an average degree and if these words are pronounced, the marks are aurally lowly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The words ‘EAZY’ and ‘EAZYBI’ are meaningless terms, as well as the term ‘MAZARS’ is meaningless. The word ‘by’ of the earlier mark will be understood as having a meaning as explained above, while the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. This conceptual difference has, however, very little impact, since it is by far the less dominant part in the earlier mark.

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, despite the presence of an element in the mark having a merely decorative nature, as stated above in section c) of this decision, namely in the form of a red frame.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found to be identical and the overlapping public for all the goods and services is the professional public. The degree of attention may vary from average to above average and the earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to an average degree, phonetically similar to at least an average degree or lowly similar and the marks are conceptually not similar, however, for the reasons explained above, this difference has little impact.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Taking into account all the circumstances, the few differences between the verbal element in the contested sign and the most dominant verbal element of the earlier mark are not enough to counteract the striking similarities and to safely exclude a likelihood of confusion. The signs coincide in ‘EASY’ and, as it was said above, the beginning of the sign is more memorable by the public. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods and services that are identical and will perceive them as having the same origin, even for that part of the public that pays a higher degree of attention.

In its observations, the applicant also argues that the earlier trade mark has a low distinctive character given that many trade marks include the verbal element ‘EAZY’. In support of its argument the applicant refers to some trade mark registrations in the European Union. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘EAZY’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Furthermore, there is a likelihood of confusion on the part of the professional public, as this is the public to which all the goods and services are targeted. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 153 307 for the figurative mark . It follows that the contested trade mark must be rejected for all the contested goods and services.

The applicant argues that its trade mark applied for has a reputation, by stating that it is well-established in respect of some goods and services, the products became one of the top 10 third party Jira plugins in only six months and in 2014 ‘EAZYBI’ was awarded as the Top Grossing Atlassian Connect Add-on’, and filed various items of evidence to substantiate this claim. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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

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

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Michal KRUK

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.