OPPOSITION No B 3 090 124

Analytik Jena US LLC, 2066 W 11^TH ST Upland, California 91786, United States of America (opponent), represented by Christian Hahn, Colmarer Str. 6, 79576 Weil am Rhein, Germany, and Astrid Sotriffer, Colmarer Str. 6, 79576 Weil am Rhein, Germany (professional representatives)

a g a i n s t

Pàu NV, Adhemar Borinstraat, 2070 Zwijndrecht, Belgium (applicant).

On 22/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 124 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 065 324 for the word mark ‘Docket’. The opposition is based on European Union trade mark registration No 10 130 557 for the word mark ‘DOC‑IT’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opposition was filed on 26/07/2019 by the company Ultra-Violet Products Limited, which was the owner of the earlier right at the time of filing the opposition. However, during the opposition proceedings the earlier right was subject to a total transfer to the company Analytik Jena US LLC. The recordal of the transfer was requested on 08/05/2020 and recorded by the Office on 11/05/2020. As a consequence of the transfer, and in the absence of notification to the contrary, Analytik Jena US LLC substitutes the previous owner of the earlier right as the new opponent in the present proceedings.

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 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 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, inter alia, the following:

Class 42: Design and development of computer hardware and software; computer software and hardware consultancy; all of the aforementioned services relating to image detection, processing and recordal systems for recording and analyzing images of biological, medical or chemical samples; all of the aforementioned services not relating to computer controlled combined facsimile scanning, printing and copying apparatus, nor computer software for controlling such apparatus.

The contested services are the following:

Class 42: IT services; design services.

The services in Class 42 of the earlier trade mark contain the following limitation: all of the aforementioned services relating to image detection, processing and recordal systems for recording and analyzing images of biological, medical or chemical samples; all of the aforementioned services not relating to computer controlled combined facsimile scanning, printing and copying apparatus, nor computer software for controlling such apparatus. While this limitation has been duly taken into account in the comparison below (in relation to each contested item), to avoid repetition it will not be expressly mentioned, but will be considered included by way of reference.

The contested IT services include, as a broad category, the opponent’s computer software and hardware consultancy. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested design services include the design of computer hardware and software. IT (information technology) companies often take care of all aspects of the development of their services, from the design and production of the hardware to the development (programming) of the related software. The contested design services include as a broad category the opponent’s design of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 services in question.

The relevant public is made up of consumers likely to see both the services of the earlier mark and those of the mark applied for.

In the present case, the services of the earlier mark target the professional public. With regard to the contested sign, design services are directed mostly at professional consumers (07/12/2018, R 154/2018‑2, Charli Cohen / JACOB COHEN (fig.) et al. § 24). Furthermore, the contested IT services are mainly directed at business customers with specific professional knowledge or expertise in the area of IT. Therefore, the relevant public for assessing likelihood of confusion will be the professional public.

Considering the rather specialised nature of the services at issue, the expectedly high price level, and the potentially complex terms and conditions of the services purchased, the relevant public’s degree of attention is considered to be above average.

c) The signs

DOC‑IT	Docket
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 signs are word marks composed of English words; the earlier mark consists of two verbal elements ‘DOC’ and ‘IT’, joined by a hyphen, whilst the contested sign is composed of the sole verbal element ‘Docket’.

Firstly, it should be noted that the relevant public in the various EU Member States mainly speaks the languages predominant in their respective territories (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 27). These languages are normally the official languages of the relevant territory, such as Bulgarian in Bulgaria, Polish in Poland, Slovakian in Slovakia, etc. However, it cannot be automatically excluded that the relevant public in a particular territory only knows that territory’s language (03/06/2009, C‑394/08 P, Zipcar, EU:C:2009:334, § 51).

Secondly, the use of English is common in the IT and design sectors, which target the professional public. Professionals in all countries of the European Union who work in the abovementioned industries have at least an elementary knowledge of English and usually more profound knowledge of this language in their respective fields of activity. As held by the General Court on various occasions, professionals in the IT and scientific fields are in general more familiar with the use of technical and basic English words than the general public (see, to this effect, 27/11/2007, T‑434/05, Activy Media Gateway, EU:T:2007:359, § 38, 48; confirmed by 11/12/2008, C‑57/08 P, Activy Media Gateway, EU:C:2008:718).

Thirdly, the understanding of languages is not strictly limited by geographical borders, it may well be that for some reasons, such as cultural or cross-border, certain elements of foreign vocabulary spread and are understood by the public in other Member States, particularly the professional public, as in the case at issue.

Bearing in mind the above, the verbal components of the signs, ‘DOC’, ‘IT’ and ‘Docket’, are commonplace and extensively used as part of professional terminology in the IT and design services sectors. Therefore, they will be associated by a vast majority of the relevant public with their meanings in English, as described below.

As regards the verbal elements of the earlier mark, the word ‘DOC’ is a widespread and commonly used abbreviation in computing and means ‘document’, namely ‘a piece of written, printed, or electronic matter that provides information or evidence or that serves as an official record’ (information extracted from Oxford Dictionaries on 08/09/2020 at https://www.lexico.com/definition/doc and https://www.lexico.com/definition/document). This verbal element could allude to the fact that the opponent’s design and consultancy of software/hardware are somehow related to document processing. A hyphen is a symbol used to join words, and to separate syllables of a single word. The relevant public will not attach much trade mark significance to this element, if any at all. The word ‘IT’ may be perceived by the relevant public as standing for the English pronoun ‘[third person singular] used to refer to a thing previously mentioned or easily identified’ or ‘short for information technology’ (information extracted from Oxford Dictionaries on 08/09/2020 at https://www.lexico.com/definition/it). Consequently, both ‘DOC’ and ‘IT’ are at most weak for the opponent’s services. However, the combination of the two, ‘DOC’ and ‘IT’ and used together with the hyphen, is rather unusual and surprising, and could be seen by the public as a word play between the word ‘doc’ and the two meanings of the word ‘IT’. Therefore, even though individual verbal elements of the earlier mark are at most weak, the distinctiveness of the earlier mark, taken as a whole, is just below average.

The sole verbal element of the contested sign, ‘Docket’, means, inter alia, ‘an agenda or list of things to be done’ (information extracted from Oxford Dictionaries on 08/09/2020 at https://www.lexico.com/definition/docket). Bearing in mind that the relevant services are IT services and design services in Class 42, this element is weak for the aforesaid services, as it consists of a reference to the nature or purpose of the services. More precisely, IT and design services may be specialised in the field of docketing, that is to say, the management of dates, data and documentation, and tracking of deadlines.

Moreover, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question departs from the usual way of writing. The earlier mark is entirely in upper-case letters, whereas the contested sign is in title-case, which are both fairly common ways of depicting words. In addition, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters ‘DOC’ and ‘T’ (and their sounds). However, the signs differ in their remaining letters, namely ‘I’ in the earlier mark as opposed to ‘KE’ in the contested sign (and their sounds). In addition, the earlier mark differs in the fact that it is composed of two words, of three and two letters, and a hyphen, while the contested sign is composed of one word of six letters.

As the earlier mark is a hyphenated compound consisting of two elements, it has a clearly different structure from that of the contested sign, which is an indivisible block. These differences are visually striking, also because the earlier mark’s structure and combination of these two words is unusual, and will not remain unnoticed. Furthermore, from the aural perspective, the fact that the earlier mark is composed of two words will result in a short, but audible break between them, while the contested sign will be pronounced in one breath.

Therefore, it cannot be denied that the signs share four out of the five letters of the earlier mark versus four out of the six letters of the contested sign, which establishes a certain similarity between them. However, the completely different structure of the verbal elements (one versus two words) leads to a different overall composition of the signs, which is clearly noticeable. Therefore, the signs are visually similar to a below-average degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal elements ‘DOC‑IT’ of the earlier mark will evoke certain concept(s) for the relevant public, while the verbal element ‘Docket’ of the contested sign will evoke an entirely different concept, as explained above. The marks at issue will have no meanings in common. As the signs will be associated with different meanings, irrespective of exactly how they will be perceived, the signs are conceptually dissimilar.

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, as mentioned above, even though individual verbal elements of the earlier mark are at most weak, taken as a whole it has no obvious 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 below average.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the 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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the services. Therefore, a lesser degree of similarity between 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 earlier mark has a below-average degree of inherent distinctiveness. The services are identical and they target the professional public. The public’s degree of attentiveness is above average. 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).

The below-average degree of visual and average degree of aural similarity between the signs results from the coincidence in the letters ‘DOC’ and ‘T’. Nevertheless, this coincidence should not be overestimated, because the public will be able to clearly distinguish between the signs not only due to their clearly different structures, but also due to their very different meanings, which results in a different overall impression, as explained above. The fact that the signs are conceptually dissimilar will be immediately perceived by the relevant public, in particular taking into account that the public is professional displaying the degree of attention that is above average. According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (12/01/2006, C‑361/04, PICARO, ECLI:EU:C:2006:25, § 20).

The foregoing factors strongly weigh against a finding of likelihood of confusion.

Consequently, the similarity between some letters of the signs is lost against the background of the diverging structures and meanings of the marks. Bearing that in mind, the differences identified between the signs clearly outweigh their similarities. The relevant public will not overlook that the earlier mark is composed of two elements and the hyphen, while the contested sign is composed of the sole element and, more importantly, that they evoke different meanings. These elements show a memorable difference.

Taking into account the above factors and the above-average level of attention and the professional character of the public, the differences are sufficient for the relevant public to safely distinguish between the signs.

Therefore, notwithstanding the principles of interdependence and imperfect recollection, the Opposition Division finds that there is no reason to assume that the signs, between which there exist sufficiently significant differences, come from the same undertaking, or, as the case may be, from undertaking that are economically linked.

Considering all the above, 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)(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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Jakub MROZOWSKI

Patricia LOPEZ FERNANDEZ DE CORRES

Monika CISZEWSKA

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.