OPPOSITION No B 3 089 672

Aserti Global Solutions SL, Parque Científico de Murcia, Edificio R, 3º Planta, Ctra. de Madrid km. 388, 30100 Murcia, Spain (opponent), represented by Alberto Paz Espuche, Muelle de Poniente s/n (Antigua Casa del Mar), 03001 Alicante, Spain (professional representative)

a g a i n s t

Aserti International, 1 Rue Becquerel, 56010 Vannes, France (applicant)

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 672 is upheld for all the contested services.

2. European Union trade mark application No 18 009 717 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 009 717 (figurative). The opposition is based on Spanish trade mark registration No 3 750 239 (figurative). 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 services

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

Class 42: Scientific and technological services, as well as related research and design services; design and development of computer hardware and software.

The contested services are the following:

Class 37: Machinery installation, maintenance and repair.

Class 41: Training.

Class 42: Research and development of new products for others.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 services in Class 37

The contested services in this class are considered similar to scientific and technological services, as well as related research and design services of the opponent. In particular, machinery, that is subject to the applicant’s services in this class may also be the subject of the mentioned opponent’s services. In this respect, it is quite likely that companies, conducting research and design of particular machines, also install them and offer maintenance and repair, since they possess the necessary knowledge and expertise on the respective machines. This is especially the case when it comes to machines designed in accordance with the client’s specification and requirements, where the same entity often offers all services from design through manufacture to installation of the machine, as well as maintenance and repair (warranty and after-warranty) services. In this connection, the distribution channels and relevant public of the services also coincide.

Contested services in Class 41

The contested services in this class are similar to the opponent’s scientific and technological services, as well as related research services. In particular, teaching institutions, such as universities, are also involved in research activities, which could be a necessary part of the education process. Similarly, research organisations, are often involved in educational activities, thus disseminating knowledge acquired through their research activities. Furthermore, the distribution channels of the services may coincide. Finally, they also coincide in the general purpose of acquiring and/or imparting or disseminating knowledge or skills.

Contested services in Class 42

The contested services in this class are included in the opponent’s broad category scientific and technological services, as well as related research services. This services are therefore 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.

It is recalled that the relevant public is composed of users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for that were found to be identical or similar (01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23; appeal 10/07/2009, C-416/08 P, Quartz, EU:C:2009:450, dismissed). Therefore, even though some of the contested services might also target the general public, when assessed together with the opponent’s scientific and technological services, as well as related research and design services, it is concluded that the relevant public in the case at hand is limited to professional public only.

The degree of attention may vary from average to high depending on the specialised nature of the services and their likely impact on the business activities of the respective consumers.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

It is acknowledged that part of the public might see the contested sign as composed of a figurative part and the verbal element ‘SERTI’. However, considering the specific way of representation of the sign’s elements, in particular that the component preceding the letters ‘SERTI’ is represented in the same colour, size and inclination as the following letters, thus creating a structure that will likely be seen as a whole, consumers would naturally look for a letter that this first component would be meant to represent. In this connection, it is likely that a significant part of the public sees the component before ‘SERTI’ as a stylised representation of the letter ‘A’, since it is quite close to this letter, lacking only the vertical line, connecting the two side lines of the letter. Therefore, a significant part of the public would perceive the contested sign as composed of the verbal element ‘ASERTI’ in a stylised font and a decorative element underlining the word.

The Opposition Division will focus the analysis on this part of the public, since it suffices that there is a likelihood of confusion for a non-negligible part of the public.

The verbal element ‘ASERTI’ as contained in both signs is meaningless for the public and normally distinctive. Their remaining elements, namely the component formed around the dot of the letter ‘i’ in the earlier mark (some might see in it a stylised flower or star) and the line underlying the verbal part in the contested one, will be seen as mere embellishments and will hence have limited impact on the overall impression from the signs. Therefore, ‘ASERTI’ is the most influential element of both signs. The signs have no dominant (visually eye-catching) element.

Visually, the signs coincide in ‘ASERTI’, being their most influential element. They differ in elements of lesser impact, namely their font, the colours used and some decorative elements, as described above.

In the light of the foregoing considerations, the signs are considered highly similar on visual level.

Aurally, the signs are identical since they fully coincide in the sound of their verbal element ‘ASERTI’.

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. To the extent some might see the element formed around the dot of the letter ‘i’ in the earlier mark as a stylised representation of a flower or a star, this concept would make the signs conceptually not similar for this part of the public.

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 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

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 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 signs have been found visually highly similar and aurally identical. They are further conceptually neutral for part of the public, while for another part they might be conceptually not similar, due to the concept of a flower or a start that some might see in the earlier mark. The element, however, to which these possible concepts pertain, will be seen as decoration and this aspect of comparison therefore has quite minor weight in the overall assessment of the signs.

The services of the signs are similar or identical and they are directed at professional public with attention that varies from average to high. The earlier mark is normally distinctive.

Considering the coincidence of the sole verbal element of the signs and that the differences pertain to elements of lesser impact, even if consumers take note of the differences in the stylisation of the signs, it is quite likely that they see the contested mark as a newer version of the earlier one or a specific version aimed to be used for a specific product line. It is recalled in this respect that 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/services covered are from the same or economically linked undertakings.

Consequently, it is considered that there is a likelihood of confusion on the part of the public that sees the contested sign as containing the verbal element ‘ASERTI’. It is settled case law that it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T 521/15, D, ECLI:EU:T:2017:536 and the case-law cited).

Therefore, the opposition is well founded on the basis of the opponent’s earlier trade mark. It follows that the contested trade mark must be rejected for all the contested services.

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

Michal KRUK

Teodora Valentinova TSENOVA PETROVA

Eva Inés PÉREZ SANTONJA

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.