OPPOSITION No B 3 086 256

Ilunion Sociosanitario, S.A., C/ Albacete, 3 planta baja ed. B, 28027, Madrid, Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020, Madrid, Spain (professional representative)

a g a i n s t

Siemens Aktiengesellschaft, Werner-von-Siemens-Str. 1, 80333 München, Germany (applicant), represented by Bomhard Ip S.L., C/Bilbao 1 5º, 03001 Alicante, Spain (professional representative).

On 21/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 256 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 024 616 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 18 024 616 for the word mark ‘SIERENA’. The opposition is based on the European Union trade mark registration No 17 312 562 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: Computer application software (downloadable).

Class 38: Telecommunications.

Class 44: Sickness and health care services.

Class 45: Companionship services for the elderly and disabled.

The contested goods and services, following a limitation made by the applicant thereto, are the following:

Class 9: Computer hardware and software based apparatus designed to monitor and control hvac devices, environmental, power and it devices; computer hardware and software for processing, reproducing, synchronizing, recording, organizing, downloading, uploading, transmitting, streaming, receiving, playing and viewing text, multimedia and data files; data processing programs, namely, computer software for monitoring, recording, analyzing, and storing data; computer software for processing data and related to the functioning of equipment and infrastructure in a building, and computer software for monitoring and controlling it and facility infrastructure devices and for integrating to other infrastructure control systems; computer software for hospitality, hotel and building management systems, for hospital, hotel and building systems and fire and security systems; computer software for monitoring and controlling of shades, blinds and lights; computer software for voice recognition for use in connection with the transmission of voice and data; all the aforementioned goods not in the field of civil security and civil protection.

Class 42: Technological services for consulting on design, installation, factory acceptance testing, commissioning, monitoring or controlling of IT, power, and facility (hvac, physical security, fire safety) devices, especially infrastructure equipment and devices for a data center; platform as a service (paas) featuring computer software platforms for home automation and home device integration software; platform as a service (paas) featuring computer software platforms for wireless communication software for voice, audio, video, and data transmission; software as a service (saas) featuring computer software for use to connect and control internet of things (iot) electronic devices; software as a service (saas) featuring computer software for others to use for the development of software to manage, connect, and operate internet of things (iot) electronic devices; all the aforementioned services not in the field of civil security and civil protection.

There is a limitation at the end of the specification of contested goods and services in classes 9 and 42 that reads all the aforementioned goods not in the field of civil security and civil protection. Although it will not be specifically mentioned, the Opposition Division will take into account this limitation in the comparison that follows, which refers to all the goods and services in these classes.

An interpretation of the wording of the list of services is required to determine the scope of protection of these goods.

The term ‘especially’, used in the applicant’s list of services, indicates that the specific services 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).

As a preliminary remark, 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.

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

Contrary to the applicant’s arguments, the opponent’s goods computer application software (downloadable) in Class 9 are not limited to ‘teleassistance systems’ as no limitation is indicated in the opponent’s list of goods and there is no reason why the wording included in the earlier mark ‘teleasistencia en mobilidad’ should be considered as a limitation of the goods covered by this mark.

The opponent’s computer application software (downloadable) is a broad category referring to any kind of computer program or group of programs designed to help users perform an activity. The contested goods in Class 9 include computer hardware and software based apparatus and several types of computer software. They are identical or at least similar to the opponent’s computer application software (downloadable) as some of them (such as the types of the contested ‘computer software’) are included in or overlap with these opponent’s goods and others (such as the types of the contested ‘computer hardware based apparatus’) coincide in producer, relevant public and distribution channels and can be also complementary.

Contested services in Class 42

Technological consultancy services are professional services designed to facilitate the use of technology by enterprises and end users. They provide consultancy on specialized technology-oriented solutions by combining the processes and functions of software, hardware, networks, telecommunications and electronics.

Platform as a service (PaaS) is a cloud computing model where a third-party provider delivers hardware and software tools to users over the internet. In the same way Software as a service (SaaS) is a model for the distribution of software where customers access software over the Internet.

The contested services are different kinds of technological consultancy services and IT services such as types of Platform as a service (PaaS) or Software as a service (SaaS). They are similar to the opponent’s computer application software (downloadable) as they coincide in producer, relevant public and distribution channels. Furthermore some of them can be in competition.

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

The degree of attention varies from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	SIERENA
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 a figurative mark composed of the verbal element ‘serena’ in bold lowercase blue letters and the verbal elements ‘Teleasistencia en movilidad’ below it in orange and in a considerably smaller typeface.

For a part of the public, such as the Spanish and Italian speaking public the verbal element ‘serena’ of the earlier mark is, inter alia, an adjective meaning ‘peaceful’. For the Spanish public ‘serena’ also refers to mugginess or night humidity and for the Italian speaking public it is also a quite common female name of Latin origin. The word ‘serena’ could be perceived as a name also by other parts of the relevant public, such as a part of the Spanish, French, German, Polish speaking public, as despite being not a common name, it belongs to the famous tennis player Serena Williams. It cannot be excluded that another part of the above mentioned public will perceive the verbal element ‘serena’ as meaningless in the context of the earlier mark taking into account that beyond being an unusual female name it is also depicted in lowercase letters (included the first letter) in the earlier mark whereas normally first names start with the capital letter. Irrespective of whether it is understood or not, contrary to the applicant’s opinion, this verbal element is considered inherently distinctive, since it is neither descriptive nor allusive of the relevant goods and services to an extent that would materially affect its degree of distinctiveness.

The verbal elements’ combination ‘Teleasistencia en movilidad’ of the earlier mark means ‘remote care service in mobility’ in Spanish and in other languages having similar equivalent expressions, such as in Italian (i.e. teleassistenza in mobilità). For this part of the public this expression is weak in relation to the relevant goods which are ‘computer application software’ as it indicates their purpose. For another part of the public this sequence of verbal elements is meaningless and therefore distinctive.

In any case the verbal element ‘serena’ is the dominant element in the earlier mark due to its bigger size in comparison with the elements ‘Teleasistencia en movilidad’ and its position in the upper part of the mark.

The contested mark is the word mark ‘SIERENA’. Being a word mark, it is the word as such that is protected and not its written form as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation). Therefore, it is irrelevant whether the contested sign is represented in upper- or lower-case letters. For the same reasons the contested sign has no element that can be considered more dominant than other elements.

The verbal element ‘SIERENA’ of the contested sign is meaningless for the majority of the relevant public. It is true that in some languages, for example in English and Spanish, there are words such as ‘SIREN’ or ‘SIRENA’ meaning mermaid or siren, as also the applicant argued. However there is no reason why the public should perceive the verbal element ‘SIERENA’ as a variant or misspelling of these words in the context of the relevant goods and services considering that the meaning conveyed by these words have no connection in relation to goods and services at issue. As the verbal element ‘SIERENA’ will be perceived as meaningless it has an average degree of distinctiveness.

Visually, the signs coincide in the sequence of letters ‘S*ERENA’ which constitutes the entire dominant and distinctive verbal element of the earlier mark ‘SERENA’ and six out of the seven letters of the contested sign ‘SIERENA’. However, they differ in the additional second letter ‘I’ of the contested sign ‘SIERENA’ and in the sequence of verbal elements ‘Teleasistencia en movilidad’ of the earlier mark. This sequence of verbal elements does not have a significant impact in the overall impression of the earlier mark, due to the small size and secondary position as well as weak distinctive character of (for a part of the public) of these verbal elements. The signs also differ in the stylization and colours of the earlier mark’s verbal elements which will have a low impact on consumers as they are perceived as merely decorative features.

Therefore, bearing in mind all the above and the fact that the dominant and distinctive verbal element of the earlier mark ‘SERENA’ and the contested sign ‘SIERENA’ differ only in one letter, the signs have to be considered visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in sound of the letters ‛S*ERENA’, present identically in both signs. The pronunciation differs in the sound of the second letter ‘I’ of the contested sign ‘SIERENA’. The verbal element of the earlier mark ‘Teleasistencia en movilidad’ is not likely to be pronounced considering its small size and secondary position and the tendency of consumers to shorten the marks composed by several verbal elements (30/11/2006, T-43/05, Brothers by Camper, EU: T: 2006: 370, § 75). It is true that the earlier mark’s verbal element ‘SERENA’ is pronounced in three syllables and the contested sign’s verbal element ‘SIERENA’ is pronounced in three or four syllables (as claimed by the applicant) depending on the different languages in the relevant territory. However the fact remains that these verbal elements aurally differ only in one letter, which makes them aurally very similar.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For that part of the public that will perceive a meaning in one or more verbal elements of the earlier mark the signs are not conceptually similar as the contested sign is meaningless. For that part of the public for which the earlier mark as well as the contested sign are meaningless a conceptual comparison is not possible. Therefore 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) 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 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 weak element in the mark (for a part of the public), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (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, Sàbel, EU:C:1997:528, § 22).

The goods and services at issue are at least similar. The signs are visually similar to an average degree and aurally similar to a high degree as the dominant and distinctive verbal element ‘SERENA’ of the earlier mark constitutes almost the entire contested sign ‘SIERENA’ with the exception of one letter (i.e. the letter ‘I’ of the contested sign). Conceptually the signs are not similar for a part of the public under analysis, while for another part thereof the conceptual comparison is neutral.

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).

Bearing in mind all of the above, the differences in the sequence of the verbal element ‘Teleasistencia en movilidad’ at the lower part of the earlier mark and in the second letter of the contested sign ‘I’, are not sufficient to outweigh the signs’ visual and aural similarities, lying in the distinctive verbal elements ‘SERENA’ and ‘SIERENA’. Therefore, contrary to the applicant’s arguments, it is likely that the relevant public could confuse the signs or believe that the goods and services, which have been found at least similar, originate from the same or economically linked undertakings.

This is also true for that part of the public that will attach a meaning to one of more verbal elements of the earlier mark and for which the marks are conceptually not similar. In this regard it is noted that the conceptual differences do not outweigh any visual or phonetic similarities if the meaning relates to an abstract idea which, in the context of the goods concerned, will not have associations liable to facilitate the recollection of the mark on the basis of that meaning (27/02/2015, T-227/13, INTERFACE, EU:T:2015:120, § 48; 24/09/2019, T-497/18, IAK (fig.) / IAK - Institut für angewandte Kreativität, EU:T:2019:689, § 92; 19/12/2019, T-589/18, MIM NATURA, § 65). Moreover, a ‘neutralisation’ of the similarities by existing conceptual differences may also be excluded if the visual and phonetic similarities are particularly high (see 13/12/2012, T-34/10, Magic light, § 39). Therefore taking into account the above, in the case at issue the relevant visual and aural similarities outweigh the conceptual differences.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they concern cases where the marks’ verbal elements differ in the sequence of more than one letter, including the first letter (e.g. PROVISC/DUOVISC vs. BIOVISC, BLISTAL vs CRISTAL, NOVOZON vs LAVOZON and IMACORT vs BIACORT). However in the case at issue the first letter of the contested sign ‘SIERENA’ coincides with the first letter of the dominant element of the earlier mark ‘SERENA’ and these verbal elements almost completely coincide with the exception only of the additional second letter of the contested sign: ‘I’.

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 17 312 562. It follows that the contested trade mark must be rejected for all the contested 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.

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

Kieran HENEGHAN

Angela DI BLASIO

Catherine MEDINA

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.