OPPOSITION No B 3 076 551

Bitrock Digital Partners, Pullacherstrasse 11, 82049 Pullach im Isartal, Germany (opponent), represented by Weitnauer Rechtsanwälte, Ohmstr. 22, 80802 Munich, Germany (professional representative)

a g a i n s t

Andrea Benedetto Sganzerla, Piazzale Brescia 8, 20149 Milan, Italy and Bitrock S.r.l., via Borsieri 41, Milan, Italy (applicants).

On 02/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 551 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 007 306 is rejected in its entirety.

3. The applicants bear 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 18 007 306 for the figurative mark . The opposition is based on European Union trade mark registration No 17 921 496 for the word mark ‘BITROCK’. 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.

a) The goods and services

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

Class 35: Business management consultancy and advisory services; business strategy services; business merger consultation; business advice relating to disposals; business advice relating to growth financing; business advisory services relating to product development; business merger services; business succession planning; business consultation and management regarding launching of new products; business assistance relating to the formation of commercial undertakings; business management supervision.

Class 36: Financial consultancy; venture capital (services for the finding of -); venture capital (services for the provision of -); providing information, consultancy and advice in the field of financial valuation.

Class 41: Training; educational instruction; provision of training courses; organization of competitions; organisation of training courses; organization of balls; arranging of conferences.

Class 42: Software development.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment; software; software suites; computer programs [downloadable software]; computer software for use as an application programming interface (API); computer programs and software for image processing used for mobile phones.

Class 35: Business process management and consulting; advisory services relating to business analysis; consultancy services regarding business strategies; management advice; business efficiency advice; business project management; business consultancy and advisory services; assistance and advice regarding business management.

Class 42: Consultancy in the field of computers; IT project management; software development, programming and implementation; software design and development; information technology [IT] consultancy; programming of multimedia applications; consulting in the field of cloud computing networks and applications; engineering services for applications on large and medium-sized computer systems; IT consultancy, advisory and information services; updating and maintenance of computer software and programs; software engineering services for data processing programs; consultancy relating to the design and development of computer software programs; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam).

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 information technology and audiovisual equipment; software; software suites; computer programs [downloadable software]; computer software for use as an application programming interface (API); computer programs and software for image processing used for mobile phones are similar to the opponent’s software development. They are complementary goods and services, can coincide in their provider and target the same public. They may also have the same distribution channels.

Contested services in Class 35

Business consultancy and advisory services are identically contained in both lists of services (including synonyms).

The contested business process management and consulting; advisory services relating to business analysis; consultancy services regarding business strategies; management advice; business efficiency advice; business project management; assistance and advice regarding business management are included in the broad category of the opponent’s business management consultancy and advisory services. Therefore, they are identical.

Contested services in Class 42

Software development is identically contained in both lists of services.

The contested consultancy in the field of computers; IT project management; software programming and implementation; software design and development; information technology [IT] consultancy; programming of multimedia applications; consulting in the field of cloud computing networks and applications; engineering services for applications on large and medium-sized computer systems; IT consultancy, advisory and information services; updating and maintenance of computer software and programs; software engineering services for data processing programs; consultancy relating to the design and development of computer software programs; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam) are included in the broad category of the opponent’s software development. Therefore, they are identical.

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 are directed at the public at large and business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

BITROCK
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 earlier mark is the word mark ‘BITROCK’. The contested sign is figurative and is composed of the same verbal element in standard typeface, with its first three letters in bold, preceded by a figurative element in brown.

This word as a whole is meaningless and has an average degree of distinctiveness, and for those who understand English and dissect it into ‘BIT’ and ‘ROCK’, the components convey the same concept. Whether the word ‘BITROCK’ or its components are understood or not, and whether this could affect the distinctive character of either of the components or the signs’ verbal elements as a whole, is immaterial as they are the same in both marks and the additional figurative element of the contested sign has no meaning. The differences are limited to three letters in bold font and a figurative element, neither of which have much impact.

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).

It follows that the signs are visually highly similar, aurally identical, and conceptually identical for the consumers understanding the meaning of the verbal elements. For the remaining consumers in the relevant territory, neither of the signs has a meaning. 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) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are similar and the services are identical.

The signs are visually highly similar, and aurally and conceptually identical for a part of the public. The sole verbal element of both signs is the same. The differences in the bold letters and figurative element of the contested sign are not sufficient to counteract these similarities, which leads to the conclusion that consumers will not be able to distinguish between the signs. This conclusion would hold true even if the distinctiveness of the coinciding elements and the earlier mark as a whole were very low and irrespective of the degree of attention and the sophistication of the relevant public.

Furthermore, 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours or adding verbal or figurative elements in order to denote new product lines or to endow a trade mark with a new, fashionable image.

Although the public in the relevant territory might detect that the earlier sign is a word mark and the contested sign is depicted differently, including a figurative element, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a mere variation of the earlier mark, with the only differences being the bold letters and figurative element of the contested sign. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as coming from the same undertaking (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 921 496. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 applicants are the losing parties, they 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.