OPPOSITION No B 3 075 998

Mktplace - Comércio Eletrónico, S.A., Rua Engº Ferreira Dias, nº 924, E 5, 4100-246 Porto, Portugal (opponent), represented by José Nunes de Oliveira, SPCA - Sociedade de Advogados, SP RL Rua da Bolsa, Palácio da Bolsa, 4050-116 Porto, Portugal (professional representative)

a g a i n s t

emTransit B.V., Wibautstraat 131D, 1091 GL, Amsterdam, Netherlands (applicant), represented by Turnstone B.V., Prof. J.H. Bavincklaan 2, 1183 AT Amstelveen, Netherlands (professional representative).

On 26/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 998 is partially upheld, namely for the following contested goods:

Class 9: Software; apps for mobile phones; global positioning system [GPS] apparatus; cameras; automatic steering apparatus for vehicles.

2. European Union trade mark application No 17 966 414 is rejected for all the above goods. 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 17 966 414 for the word mark ‘DOTT’. The opposition is based on European Union trade mark registration No 17 942 401 for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

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

Class 9: Website development software; application development software; software.

Class 42: Software design and development; software development, programming and implementation; design and development of software for website development; design, development and implementation of software; advice and development services relating to computer software; design and development of computer software for process control; IT services.

The contested goods and services are the following:

Class 9: Software; apps for mobile phones; time recording apparatus; global positioning system [GPS] apparatus; cameras; automatic steering apparatus for vehicles; electronic key fobs being remote control apparatus; electric locks; anti-theft warning apparatus.

Class 12: Electric vehicles; electric bicycles and scooters; parts of all the aforementioned goods.

Class 39: Short term rental of vehicles, particularly electric vehicles; bicycle rental; vehicle rental; passenger transport; taxi transport; vehicle location services; courier services [messages or merchandise]; providing a website and mobile application featuring information in the field of electric vehicle transportation, electric vehicle sharing programs, and electric vehicle rental services; providing driving directions for travel purposes; all the aforementioned services also provided via the internet or via dedicated apps.

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

Software is identically contained in both lists of goods.

The contested apps for mobile phones are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested global positioning system [GPS] apparatus; automatic steering apparatus for vehicles are on-board computers. These goods are similar to the opponent’s software since they are complementary goods that coincide in their producers, distribution channels and relevant public.

The contested cameras are also similar to the opponent’s software. These are also complementary goods that coincide in their distribution channels, relevant public and producers.

The contested time recording apparatus; electronic key fobs being remote control apparatus; electric locks; anti-theft warning apparatus are dissimilar to all the opponent’s goods and services, which are all software-related. Contrary to the opponent’s opinion, these goods are not identical to software or any software related services. In today’s high-tech society, almost all electronic or digital apparatus function using integrated software. This does not, however, lead to the automatic conclusion that software is similar to goods that use software to function successfully. Although the above mentioned contested goods function using integrated software, this does not lead to the conclusion that they are similar to software. One could argue that the software is important for the use of them; however, they are not complementary because they are not aimed at the same public. The above mentioned contested goods are aimed for the general public, whereas the software and the software related services are aimed at the manufacturers of these goods. The producers are not the same, nor are the distribution channels, and they do not have the same purpose.

Contested goods in Class 12

A similar logic as in the previous paragraph applies to the contested electric vehicles; electric bicycles and scooters; parts of all the aforementioned goods in Class 12. The automobile industry is a complex industry involving various kinds of companies, including car manufacturing companies as well as any suppliers that provide the car manufacturer with various goods and services, including software related. Several areas of production can be distinguished: drive engineering, chassis, electronics, interior and exterior. The fact that the final product (the cars or bicycles) incorporate software or that software related services are necessary for their production is not a reason for finding similarity. Furthermore, when purchasing a car, the general public knows that a car incorporates many items from many sources and that the car manufacturer might have purchased goods or services that have been manufactured or offered by others. However, as far as the consumer of cars and bicycles is concerned, the goods are normally offered under only one sign, which makes it almost impossible for the general public to identify other manufacturers or service suppliers. In principle software for cars or software related services for their production are not commonly produced by the car manufacturer.

In relation to the opponent’s argument that he advertises and offers for sale through his webpage goods like electrical scooters, electrical bicycles etc., the Office notes that the comparison of the goods and services is 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 this comparison since it is not part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the Office can only consider the list of goods for which the opponent’s trade mark is registered and which appears on the trade mark registration certificate, without entering into the opponent’s actual business. It follows that the opponent’s claim has to be set aside.

Therefore, the contested electric vehicles; electric bicycles and scooters; parts of all the aforementioned goods are dissimilar to all the opponents goods and services.

Contested services in Class 39

The contested services in Class 39 are various transport, vehicle rent and courier services. These services are provided by specialist transport and car rental companies whose business is not the development and sale of software. The contested services are rendered by different providers and specialists and through different distribution channels. They also target different publics and are not in competition with the opponent’s goods and services.

As to the contested service providing a website and mobile application featuring information in the field of electric vehicle transportation, explicitly pointed out by the opponent, this is an online information service whose subject matter is transport. It refers to providing a user with materials (general or specific) about the matter of electric vehicle transportation. The fact that the rendering of the information is by electronic means does not make it similar to the opponent’s software services or goods.

Therefore, the contested short term rental of vehicles, particularly electric vehicles; bicycle rental; vehicle rental; passenger transport; taxi transport; vehicle location services; courier services [messages or merchandise]; providing a website and mobile application featuring information in the field of electric vehicle transportation, electric vehicle sharing programs, and electric vehicle rental services; providing driving directions for travel purposes; all the aforementioned services also provided via the internet or via dedicated apps are dissimilar to all the opponent’s goods and services.

2. The signs

	DOTT
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 signs consist of the same verbal element ‘DOTT’ that in the earlier mark is depicted in a slightly stylised typeface and in a lilac colour. Consumers are used to trade marks in which a verbal element is embellished with a fanciful typeface, colours, and other graphical elements, such as the said typeface and colour of the earlier mark. Therefore, these elements of the earlier mark will be perceived as mere accessories to the verbal element and not as an indicator of commercial origin.

In light of the foregoing, where the stylisation of the earlier mark hardly will have any impact on the perception of the sign and will not evoke any concept, these aspects will have no impact on the assessment of the signs, since their distinctiveness will be the same for the public at issue. This remains true irrespective of whether the public sees any meaning in the single verbal elements of both signs or not, and irrespective of whether they would link such meaning to the goods at issue or not.

Consequently, the signs are aurally identical, conceptually identical for those who see a meaning in them or neutral for those who see them as meaningless, whilst, because of the low stylisation of the earlier mark, they are visually highly similar.

3. 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/or 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).

The near identity of the signs implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

Considering the above and the identity or similarity between some of the contested goods and the opponent’s goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for all the goods found to be identical or similar.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

For the same reasons there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR in relation to the dissimilar goods and services, as the similarity of goods and services is, as mentioned, a sine qua non for there to be likelihood of confusion.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Meglena BENOVA

Valeria ANCHINI

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.