OPPOSITION Nо B 3 089 365

 

Comsof, Sassevaartstraat 46 bus 214, 9000 Gent, Belgium (opponent), represented by Bap IP BV - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium (professional representative) 

 

a g a i n s t

 

Dialoga Servicios Interactivos, S.A., Plaza Euskadi Nº 5 Planta 12, 48009 Bilbao, Spain (applicant), represented by Luigi Carlini, C/ Lagasca 125, 1º Ext. Izq., 28006 Madrid, Spain (professional representative).

On 30/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 089 365 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 026 021  (figurative mark). The opposition is based on Benelux trade mark registration No 1 389 602 ‘COMSOF’ (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.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submits proof of use of the trade mark on which the opposition is based, namely Benelux trade mark registration No 1 389 602.

In the present case, the date of filing of the contested trade mark is 21/02/2019.

The earlier trade mark No 1 389 602 was filed on 31/01/2019 and registered on 20/04/2019, meaning that at the time the applicant requested proof of use, the earlier mark was not yet subject to the use requirement. Therefore, the request for proof of use is inadmissible.

 

a) The goods and services

 

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

 

Class 9: Downloadable software and software applications; communication and networking software; scheduling software; software as an aid for designing and scheduling of networks; network management control apparatus; system software; software and software applications for scheduling and developing telecom networks, fibre-optic technology, heating networks and electricity networks.

Class 42: Design and development of computer software (for others); research relating to the development of computer programs and software; consultancy in the field of computer software; computer programming; software development, programming and implementation; software as a service (SaaS); providing temporary use of non-downloadable computer software; platform as a service [PaaS]; rental and hosting of computer software; maintenance of computer software; development of computer software application solutions; updating of computer software; research and development of new products for others; design and development of networks; telecommunications technology consultancy; design and consultancy services relating to the configuration of systems which are used in applications that support fibre-optic technology; development of software for automated planning, customization and design of heating networks and electricity networks; development of software for planning and designing telecom networks; engineering design; software engineering; consultancy and provision of information, including online, relating to all the aforementioned services.

 

The contested goods and services are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; other digital recording media; data processing equipment, computers; computer software; education software; interactive computer software; downloadable computer programs; freeware; compiler software; computer graphics software; downloadable software; computer software, recorded.

Class 38: Telecommunications.

Some of the contested goods and services are identical or similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

 

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 presumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services concerned, the frequency of purchase and their price.

 

c) The signs

 

COMSOF
Earlier trade mark	Contested sign

 

 

The relevant territory is the Benelux.

 

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 trade mark is a word mark consisting of the coined word ‘COMSOF’. Taken as a whole it has no meaning for the relevant public and is therefore considered to be of normal distinctive character. To the extent that the applicant argues that the earlier mark will be dissected into the elements ‘COM’ and ‘SOF’, being allusive for communication and software, the Opposition Division recalls that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The Court has held that consumers will only break a mark into elements when these suggest a specific meaning for them or resemble words known to them (judgement of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, §57). In the view of the Opposition Division neither ‘COM’ nor ‘SOF’ constitute clearly recognisable elements, but will be rather perceived as one single unit. Moreover, neither the element ‘COM’ nor ‘SOF’ are common abbreviations for the terms ‘communication’ or ‘software’, which makes it even more unlikely that the relevant public may identify these words within the earlier mark.

The contested sign is a figurative mark consisting of the verbal element ‘SOFTCOMM’, depicted in a standard font in black and green colours, and the graphical representation of a headset placed within a green coloured circle. While the verbal element as a whole has no meaning, and is therefore distinctive, the Opposition Division considers it likely that parts of the relevant public will split this word into the elements ‘SOFT’ and ‘COMM’. This is due to the fact that the elements ‘SOFT’ and ‘COMM’ are depicted in two different colours (black and green) and, contrary to the situation in the earlier mark, are common abbreviations used in connection with software and communication. In relation to the relevant goods and services, these elements are therefore of weak distinctive character for such public. The graphical representation of a headset in a green circle might be perceived, at least by parts of the relevant public, as a reference to the purpose of the goods and services (communication), and to this extent will be of low distinctive character. For the public who won’t make such association the graphical element is of normal distinctive character. The use of the different colours for the word element is, although of mainly decorative nature, of some limited impact on the consumer’s perception.

 

The earlier trade mark is a word mark and by means of definition does not have any dominant elements. Moreover, the contested sign has no element that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

Visually, the signs coincide in the use of 6 out of 8 letters, whereas the string of the letters ‘C-O-M’ and ‘S-O-F’ are used in the same order, but in opposing positions (apart from the respective second letter ‘O’). Furthermore, the signs differ in the use of two additional letters in the contested sign (‘T’ and ‘M’). The signs also differ on account of the graphical element and the use of different colours which are only present in the contested sign. Taking into account that the signs differ in their beginnings, which is usually the part that catches the consumers attention, the signs are considered to be visually similar only to a low degree no matter whether the various elements of the contested sign will be perceived as being weak or not.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory (Benelux), similar considerations as for the visual comparison apply. Although, the signs coincide in the pronunciation of the letters ‘C-O-M’ and ‘S-O-F’ it needs to be recalled that these strings of letters are placed in opposing positions, which leads to a rather different pronunciation of the signs as a whole. Furthermore, the contested sign contains the additional letters ‘T’ and ‘M’, which at least with regard to the letter ‘T’ lead to an additional phonetical difference. Taking into account the above, and in particular the fact that the signs differ in their beginnings, and irrespective of the weak distinctive character of the verbal elements in the contested sign for parts of the public, they are considered to be aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public that does not attribute any meaning neither to the contested nor the earlier sign, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of similarity.

For the part of the public who does not associate any meaning to the verbal elements of both signs, but to the graphical element of the contested sign only (a headset), the earlier mark remains to have no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As regards to the public who will associate the various elements of the contested sign with the above-mentioned meanings, the signs are conceptually not similar, because the earlier mark will not be associated with any particular meaning either.

 

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 and 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).

In the present case, the goods and services have been assumed to be identical and target the public at large as well as professionals, whose degree of attention will vary from average to high, depending on the goods and services in question. The degree of inherent distinctiveness of the earlier mark is normal. The signs are visually and aurally similar to a low degree. Depending on the different perceptions of different parts of the relevant public, a conceptual comparison of the signs is either not possible, or the signs are conceptually not similar.

As mentioned above, the visual and aural similarities of the signs are limited to the coinciding string of letters ‘C-O-M’ and ‘S-O-F’, which however are placed in opposing positions. Together with the additional letters ‘T’ and ‘M’, as well as the graphical element and use of colours, the overall impression of the signs is rather different. In this regard the Opposition Division notes that the above-mentioned elements of the earlier mark are not merely inverted in the contested sign, which consists, as already mentioned above, of additional letters and graphical elements. In this context it has to be recalled that neither ‘SOF’ nor ‘COM’ are common abbreviations for software or communication.

Considering all the above, including the fact that the signs are either conceptually not similar or a conceptual comparison cannot be made, and even assuming that the goods and services are identical, and that for some of the goods and services the relevant public may pay only an average degree of attention, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Begoña URIARTE VALIENTE

Holger Peter KUNZ

Anna ZIOLKOWSKA

 

 

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.