OPPOSITION Nо B 3 091 947

Ikarus Security Software GmbH, Blechturmgasse 11, 1050 Wien, Austria (opponent), represented by Freimüller / Obereder / Pilz Rechtsanwältinnen GmbH, Alser Str. 21, 1080 Wien, Austria (professional representative)

a g a i n s t

Intrasoft International S.A., 2b Rue Nicolas Bove, 1253 Luxembourg, Luxembourg (applicant), represented by Eirini Papadopoulou, 19 Km Peanias-markopoulou Av., 190 02 Paiania - Attica, Greece (professional representative).

On 07/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 947 is partially upheld, namely for the following contested goods and services:

Class 9: Software.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services.

Class 41: Education.

Class 42: Testing, authentication and quality control; design services; IT services.

2. European Union trade mark application No 18 099 922 is rejected for all the above goods and services. It may proceed for the remaining services in Class 41.

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 18 099 922 (figurative mark). The opposition is based on, inter alia, EUTM registration No 959 478 for the word mark ‘IKARUS’. The opponent invoked Article 8(1)(a) and(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 EUTM registration No 959 478.

a) The goods and services

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

Class 9: Data processing apparatus and computers.

Class 16: Operating handbooks (manuals) for software applications.

Class 35: Advertising; business consultancy, in particular in connection with virus protection programs; planning and implementing of virus protection strategies.

Class 38: Telecommunications, telephone hot-line support services for virus detection and removal.

Class 41: Personnel training.

Class 42: Computer programming, installation and maintenance of virus protection programs.

The contested goods and services are the following:

Class 9: Software.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services.

Class 41: Publishing and reporting; education, entertainment and sport services.

Class 42: Testing, authentication and quality control; design services; IT services.

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

The contested software is similar to the opponent’s data processing apparatus because they coincide in producer, distribution channels and relevant public. Moreover, they are complementary.

Contested services in Class 35

The contested advertising, marketing and promotional services include or overlap with the opponent’s advertising. Therefore, they are identical.

The contested business analysis, research and information services; business assistance, management and administrative services include or overlap with the opponent’s business consultancy, in particular in connection with virus protection program. Therefore, they are identical.

Contested services in Class 41

The contested education includes, as a broader category, the opponent’s personnel training. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested publishing and reporting; entertainment and sport services have nothing in common with the opponent’s computers in Class 9, handbooks for software applications in Class 16, advertising and business consultancy services in Class 35, telecommunications services in Class 38, education services in Class 41 or IT services in Class 42. The goods and services in question have different natures and purposes, are produced/provided by different undertakings, and are sold through different distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are considered dissimilar.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s computer programming, installation and maintenance of virus protection programs. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The broad category of the contested design services includes computer system design. It is similar to the opponent’s computers in Class 9 because these goods and services coincide in distribution channels and relevant public. Moreover, they are complementary.

The contested testing, authentication and quality control are at least similar to a low degree to the opponent’s computer programming, installation and maintenance of virus protection programs because they have the same purpose, namely achieving an efficient and updated (computer) system. Moreover, they coincide in provider and relevant public.

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 identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the fields of education and IT.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the goods and services purchased.

c) The signs and distinctiveness of the earlier mark

IKARUS
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.

The vast majority of the public throughout the relevant territory will perceive the contested sign’s verbal element, ‘ICARUS’, as the name of a Greek mythological figure, and the earlier mark, ‘IKARUS’, as a misspelling of this name. This applies, at least, to the English-speaking part of the relevant public. Therefore, the Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The verbal elements ‘IKARUS’ and ‘ICARUS’ are not related to the relevant goods and services, and are, therefore, distinctive to an average degree.

The figurative elements and aspects in the contested sign, namely the vertical and horizontal stripes, the bold typeface and the colours are of a purely decorative nature and of no trade mark significance. Moreover, 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).

The contested sign’s verbal element ‘ICARUS’ is the dominant element as it is the most eye-catching.

As the earlier trade mark has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory – and since the opponent did not claim enhanced distinctiveness – the distinctiveness of the earlier mark must be seen as normal.

Visually, the signs coincide in the letters ‘I*ARUS’. However, they differ in their second letter, ‘C’ v ‘K’ respectively, and in the figurative elements and aspects of the contested sign, which have no trade mark significance, as seen above.

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

Aurally, the signs are identical since the only differing letters in the signs, ‘C’/‘K’, are pronounced identically in English.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, the signs are conceptually identical.

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

d) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to varying degrees, and partly dissimilar. They target both the public at large and the professional public with a degree of attention that varies from average to high.

The signs are visually similar to a high degree. Aurally and conceptually they are identical for the public taken into account in the comparison. The distinctiveness of the earlier mark is normal.

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 dominant element in the contested sign is almost identical to the earlier mark. The only visual difference between them is their second letter, ‘C’ v ‘K’. Therefore, the coincidences between the signs are overwhelming and sufficient to counteract their minor visual differences. Consequently, consumers will not be able to safely distinguish between the signs in the market.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 959 478. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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

 EUTM registration No 6 684 344, , for the following goods and services:

Class 9: Data-processing apparatus; computers.

Class 16: Operating handbooks (manuals) for software applications.

Class 35: Advertising; professional business consultancy.

Class 38: Telecommunications.

Class 41: Staff training services.

Class 42: Electronic programming; virus protection, in particular support with regard to virus detection and removal, development and implementation of virus protection strategies, and installation and maintenance of virus protection programs.

 EUTM registration No 9 769 531, ,

 EUTM registration No 9 769 571, ,

 EUTM registration No 9 769 613, ,

 EUTM registration No 9 769 654, , and

 EUTM registration No 9 769 662, for the following goods and services:

Class 9: Data-processing apparatus; computers.

Class 38: Telecommunications.

Class 42: Electronic programming; virus protection, in particular support with regard to virus detection and removal, development and implementation of virus protection strategies, and installation and maintenance of virus protection programs.

These other earlier rights are less similar to the contested mark, because they contain additional verbal and figurative elements. Moreover, they cover the same / a similar scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected, and no likelihood of confusion exists with respect to those goods and services.

The opposition must also fail on the grounds of Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are obviously not identical.

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.

The Opposition Division

Sofia SACRISTAN MARTINEZ

Sylvie ALBRECHT

Tzvetelina IANTCHEVA

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.