OPPOSITION No B 3 086 710

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OPPOSITION DIVISION

OPPOSITION No B 3 086 710

AINMT Holdings AB, Åsögatan 108, 11829 Stockholm, Sweden (opponent), represented by Advokatfirman Marlaw AB, Riddargatan 7A, 5 tr, 114 35 Stockholm, Sweden (professional representative)

a g a i n s t

ICE Industrial Services a.s., U Slavie 1540/2a, 100 00, Praha 10 – Vršovice, Czech Republic (applicant), represented by Radmila Baumová, nám. Republiky 75/2, 591 01 Žďár nad Sázavou, Czech Republic (professional representative).

On 14/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 710 is partially upheld, namely for the following contested goods and services:

Class 9: Sound and picture recording apparatus; data processing apparatus; computers; computer software (other than computer software and computer programs relating to insurance, motor vehicles and/or relating to the management/disposal of damaged vehicles); apparatus and instruments for reproducing of data; imaging apparatus; firmware.

Class 37: Installation of computer systems; Installing of electronic communications networks; Installation, maintenance and repair of computer network and information technology equipment.

Class 42: Computer programming; creation of computer software (other than any services relating to computer software, computer programs, development of computer software and computer services relating to insurance, motor vehicles and/or the management/disposal of vehicles); computer system design; monitoring of computer systems by remote access; research and development for others; science and technology services; scientific and technological design; industrial analysis and research services; computer hardware development; development of computer systems; development of computer firmware; development of operating system software; development of programmes for data processing; maintenance of software; product research; consultancy services relating to computer programming; information technology [it] consultancy; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; research relating to the computerised automation of industrial processes; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); rental of software; leasing computer facilities; rental of software; computer rental.

2. European Union trade mark application No 18 023 707 is rejected for all the above goods and services. 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 18 023 707 Shape1 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 17 390 212 ‘ice group’ (word 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.

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 European Union trade mark registration No 17 390 212.

The goods and services

It is noted that the opponent’s above mentioned mark as well as all its additional marks invoked in the present opposition were subject to a series of opposition procedures which resulted in the goods in Class 9 being deleted from their lists of goods. These decisions are now final. Accordingly, the services on which the opposition is based are the following:

Class 38: Provision of access to computer networks and the internet; transmission and reception [transmission] of database information via the telecommunication network; providing telecommunications connections to the internet or databases; providing access to telecommunication networks; providing telecommunications connections to a global computer network; telecommunications services for the distribution of data; data transmission services over telecommunications networks; audio communications services; computer aided transmission of messages, information and images; telecommunication services; information about telecommunication; rental of telecommunication equipment; computer-aided transmission of messages and images; transmission of electronic mail; communication by computer terminals; paging services, services providing access to international data networks; transmission and/or sending of database information by telecommunications network; leasing of access time to databases; sound, image and text communication via telecommunications networks, broadband networks, mobile telephone networks and mobile broadband networks and computer networks providing access to databases; communications by cellular phones; computer aided transmission of messages and images; electronic bulletin board services [telecommunications services]; information about telecommunication; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; voice mail services; wireless broadcasting; none of the foregoing in the field of financial services.

Class 42: IT services; technical project and planning services relating to equipment for telecommunications; computer system analysis; telecommunications technology consultancy; computer services for the analysis of data; maintenance, update and design of computer software for use in telecommunications; computer programming; none of the foregoing in the field of financial services.

The list of the contested goods and services was amended by the applicant on 17/06/2019. The opponent was duly informed and it maintained the opposition notwithstanding the limitation. Accordingly, the contested goods and services are the following:

Class 9: Apparatus and instruments for switching electricity; apparatus and instruments for regulating the supply of electricity; instruments for distributing electrical current; apparatus and instruments for regulating electricity; apparatus and instruments for accumulating electric current; sound and picture recording apparatus; apparatus and instruments for reproducing of data; magnetic data carriers, recording discs; compact discs; magnetic data carriers, recording discs; data processing apparatus; computers; computer software (other than computer software and computer programs relating to insurance, motor vehicles and/or relating to the management/disposal of damaged vehicles); electric control apparatus; electronic control circuits; thermostat control apparatus; electronic sensors; electronic display panels; imaging apparatus; firmware.

Class 35: Advertising; business administration assistance; assistance (business management -); business administration; clerical services; presentation of goods on communication media, for retail purposes; business management consultancy; procurement services for others [purchasing goods and services for other businesses]; commercial information and advice for consumers [consumer advice shop].

Class 37: Electric appliance installation and repair; Repair of electrical equipment; Electrical wiring services; Installation of computer systems; Installing of electronic communications networks; Installation, maintenance and repair of computer network and information technology equipment; Repair or maintenance of power distribution or control machines and apparatus.

Class 41: Arranging professional workshop and training courses; personnel training; provision of training courses; publication of instructional literature; conducting instructional courses; conducting of instructional seminars; training in the design of computer programs; electronic publishing services; staff training in the use of electrical equipment; staff training in the use of electronic equipment; arranging and conducting of workshops [training]; training in the operation of computer memories; provision of training and education.

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.

It is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

The contested data processing apparatus; computers; computer software (other than computer software and computer programs relating to insurance, motor vehicles and/or relating to the management/disposal of damaged vehicles); apparatus and instruments for reproducing of data; firmware are similar to the opponent’s data transmission services over telecommunications networks in Class 38. Despite the difference in their respective nature and purpose, these goods and services may coincide in their distribution channels and consumers. Furthermore, they can be complementary to one another as electronic transmission of data requires, by default, some type of software and/or computer or other data processing or reproducing equipment.

The contested sound and picture recording apparatus consist of equipment for recording sounds and images to be used for or in transmission. These goods can, thus, coincide in their consumers and distribution channels with the opponent’s data transmission services over telecommunications networks services in Class 38. and they are also complementary to one another. Therefore, they are similar.

The contested imaging apparatus is a rather broadly worded term and, as such, it includes apparatus which may be used to capture and/or process image data. Therefore, the same findings apply as above in relation to the comparison of data processing apparatus and the opponent’s data transmission services over telecommunications networks services in Class 38. Therefore, these goods and services are similar at least to a low degree.

The contested apparatus and instruments for switching electricity; apparatus and instruments for regulating the supply of electricity; instruments for distributing electrical current; apparatus and instruments for regulating electricity; apparatus and instruments for accumulating electric current; electric control apparatus; electronic control circuits; thermostat control apparatus; electronic sensors; electronic display panels include sensors, displays and control devices as well as equipment used for or in relation to managing or regulating electricity. These goods have nothing to do with the opponent’s telecommunications services in Class 38 or its IT and software designing services in Class 42. These goods and services differ in their purpose, manufacturers/providers, distribution channels and they are neither in competition nor complementary. The mere fact that the contested goods may use software and/or be used in the provision of telecommunications services is not a sufficiently close link to find them complementary. Therefore, these contested goods are dissimilar to the opponent’s services.

The remaining contested goods, namely magnetic data carriers, recording discs; compact discs include products used for recording or storing images, sounds and pictures. These goods have nothing to do with the opponent’s telecommunications services in Class 38 or IT services in Class 42. These goods and services differ in their purpose, manufacturers/providers, customers, distribution channels and they are neither in competition nor complementary. Therefore, these contested goods are dissimilar to the opponent’s services.

Contested services in Class 35

The contested advertising; business administration assistance; assistance (business management -); business administration; clerical services; presentation of goods on communication media, for retail purposes; business management consultancy; procurement services for others [purchasing goods and services for other businesses]; commercial information and advice for consumers [consumer advice shop] include advertising, business management, procurement and consultancy services. These services have nothing to do with the opponent’s telecommunications services in Class 38 or its IT and software designing services in Class 42. These services differ in their natures and purposes, providers, distribution channels and they are neither in competition nor complementary. Contrary to the opponent’s arguments, the mere fact that these services of the applicant may be provided by using the opponent’s services is not a sufficiently close link. Therefore, these contested services are dissimilar to the opponent’s services.

Contested services in Class 37

The contested installation of computer systems; installing of electronic communications networks; installation, maintenance and repair of computer network and information technology equipment are similar to the opponent’s IT services; none of the foregoing in the field of financial services in Class 42. The services in comparison can coincide in their providers, distribution channels and consumers, and they can also be complementary since the opponent’s IT services may include the setting up of a computer or communications system where installation, wiring and repairing services are often provided.

The contested electric appliance installation and repair; repair of electrical equipment; electrical wiring services; repair or maintenance of power distribution or control machines and apparatus are services provided electricity repair companies which are not normally engaged in the provision of the opponent’s telecommunications services in Class 38 or IT services in Class 42. Furthermore, these services differ in their purpose, distribution channels and they are neither in competition nor complementary. Therefore, these contested services are dissimilar to the opponent’s services.

Contested services in Class 41

The contested arranging professional workshop and training courses; personnel training; provision of training courses; publication of instructional literature; conducting instructional courses; conducting of instructional seminars; training in the design of computer programs; electronic publishing services; staff training in the use of electrical equipment; staff training in the use of electronic equipment; arranging and conducting of workshops [training]; training in the operation of computer memories; provision of training and education are all services related to organizing and providing knowledge and training. Their nature and purpose is thus different from the opponent’s telecommunications services in Class 38 or its IT and software designing services in Class 42. Moreover, these services are offered by specialist undertakings which are not normally engaged in the provision of the opponent’s services. Furthermore, these services differ in their distribution channels and they are neither in competition nor complementary. Therefore, although they could target the same consumers as the opponent’s services, these contested services are dissimilar to the opponent’s services.

Contested services in Class 42

All the contested services in this class, namely computer programming; creation of computer software (other than any services relating to computer software, computer programs, development of computer software and computer services relating to insurance, motor vehicles and/or the management/disposal of vehicles); computer system design; monitoring of computer systems by remote access; research and development for others; science and technology services; scientific and technological design; industrial analysis and research services; computer hardware development; development of computer systems; development of computer firmware; development of operating system software; development of programmes for data processing; maintenance of software; product research; consultancy services relating to computer programming; information technology [it] consultancy; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; research relating to the computerised automation of industrial processes; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); rental of software; leasing computer facilities; rental of software; computer rental are or can be related to development or design of computer program. Therefore, they are all at least similar to the opponent’s services, in particular to IT services; maintenance, update and design of computer software for use in telecommunications; computer programming; none of the foregoing in the field of financial services since they coincide in their nature, consumers and usual providers.

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 to varying degrees are directed at the public at large and 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 goods and services purchased.

The signs

ice group

Shape2

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs consist of words which are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public namely United Kingdom, Ireland and Malta.

The earlier mark includes the word ‘ice’ which means ‘water in solid state’ (https://www.collinsdictionary.com/dictionary/english/ice; 09/04/2020). In the absence of any relation to the relevant services, ‘ice’ is distinctive to a normal degree, while the word ‘group’ will be perceived as simply referring to the fact that the entity offering the relevant services belongs to a group called ‘ICE’. Therefore, ‘group’ understood as meaning ‘family of companies’ is devoid of distinctiveness.

The contested sign is figurative and consists of the verbal elements ‘ice’ in white followed by a dot in blue font, placed inside a blue square. Next to the square are the words ‘industrial services’ in blue uppercase letters. None of these elements are visually more dominant than the others. The word ‘ice’ is distinctive to an average degree as explained above while the term ‘industrial services’ lacks distinctiveness in relation to the applicant’s goods and services as it merely refers to the fact that the goods and services are or may be provided in relation to or for industries, that is, it relates to their nature and/or purpose. Furthermore, the colours, the rectangle and the – minimally – stylized fonts are considered to serve decorative purposes and they are, therefore, non-distinctive.

Furthermore, 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).

Visually, the signs coincide in their initial and only distinctive part, namely in the word ‘ice’, albeit represented in different fonts and colours. The signs differ in their additional verbal and figurative elements which are, however, non-distinctive. The colours and the structure of the contested sign have a limited degree of visual impact and the same applies to the sign’s different length resulting from the differing non-distinctive verbal elements. Based on the foregoing, and also taking into account the importance of first elements in signs and the principle of verbal elements having a more important role than figurative ones, it is concluded that the signs are similar visually to an average degree.

Aurally, reference is made to the previous findings in relation to the signs’ coinciding and differing elements and their degree or lack of distinctiveness. Accordingly, the sign’s different length and rhythm resulting from the differing non-distinctive verbal elements have a very limited impact and cannot counteract the coincidence in the signs’ initial word of normal distinctiveness. Overall, the signs are similar aurally to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Accordingly, both signs will be perceived as evoking the distinctive concept of ‘ice’ while the remaining elements are non-distinctive and have a very limited impact, therefore, they cannot indicate commercial origin. Consequently, the signs are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

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).

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.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, part of the goods and services are at least similar (to various degrees). The signs are visually similar to an average degree and aurally and conceptually to a high degree. The marks coincide in their first, distinctive verbal element ‘ICE’, and this coincidence is not sufficiently counteracted by the differing elements lacking distinctiveness. Consequently, consumers could be led to believe that the goods and services found to be similar originate from the same or linked undertakings, and they may even perceive the contested sign as a variation of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 390 212. It follows that the contested trade mark must be rejected for the contested goods and services found to be similar to the opponent’s services, even considering the low degree of similarity between certain goods and services and the possible higher degree of attention of the public in relation to some of the goods and services, as explained above.

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.

The opponent has also based its opposition on the following earlier figurative trade marks:

European Union trade mark registration No 17 395 203 protecting the following services:

aided transmission of messages and images; electronic bulletin board services [telecommunications services]; information about telecommunication; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; voice mail services; wireless broadcasting; none of the foregoing in the field of financial services.

European Union trade mark registration No 17 395 237 protecting the following services:

European Union trade mark registration No 17 884 148 protecting the following services:

European Union trade mark registration No 17 884 180 protecting the following services:

European Union trade mark registration No 17 884 182 protecting the following services:

European Union trade mark registration No 17 884 184 protecting the following services:

European Union trade mark registration No 17 884 185 protecting the following services:

Class 38: Provision of access to computer networks and the internet; Transmission and reception [transmission] of database information via the telecommunication network; Providing telecommunications connections to the internet or databases; Providing access to telecommunication networks; Providing telecommunications connections to a global computer network; Telecommunications services for the distribution of data; Data transmission services over telecommunications networks; Audio communications services; Computer aided transmission of messages, information and images; Telecommunication services; Information about telecommunication; Rental of telecommunication equipment; Computer-aided transmission of messages and images; Transmission of electronic mail; Communication by computer terminals; Paging services, services providing access to international data networks; Transmission and/or sending of database information by telecommunications network; Leasing of access time to databases; Sound, image and text communication via telecommunications networks, broadband networks, mobile telephone networks and mobile broadband networks and computer networks providing access to databases; communications by cellular phones; computer aided transmission of messages and images; electronic bulletin board services [telecommunications services]; information about telecommunication; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; voice mail services; wireless broadcasting; none of the foregoing in the field of financial services; none of the foregoing intended to be used in motor vehicles and/or in relation to management/administration of damaged vehicles.

European Union trade mark registration No 17 884 394 protecting the following services:

It is apparent from the above lists of services that, in comparison with the earlier mark examined, these additional marks invoked by the opponent also protect identical or highly similar services in Classes 38 and 42, that is, various telecommunications services in Class 38 which are aimed at transmitting information via communications equipment and networks, and various IT services in Class 42 comprising computer programming and maintenance and design of computer systems. It follows that these services of the opponent must also be found to be dissimilar to part of the contested goods and services, that is, to the contested data carriers and equipment used for or in relation to managing or regulating electricity in Class 9, advertising and business management services in Class 35, electricity-related repair services in Class 37 and education and training services in Class 41. These goods and services have nothing in common as they are not manufactured/provided by the same undertakings, they do not normally coincide in their distribution channels, and they are neither in competition nor complementary. Therefore, the outcome cannot be different with respect to the contested goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

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The Opposition Division

Rosario GURRIERI

Ferenc GAZDA

Marine DARTEYRE

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.

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