OPPOSITION Nо B 3 106 529

Docprocess SA, Strada Albac, nr. 11, et. 3, sect. 1, Bucuresti, Romania (opponent), represented by Paul Cosmovici, Cosmovici Intellectual Property, Eschersheimer Landstraße 42, 60322 Frankfurt am Main, Germany (professional representative)

a g a i n s t

DocPro Inc., OMC Chambers, Wickham Cay 1, Road Town, Tortola, British Virgin Islands (applicant), represented by Riccardo Ciullo, Carrer de Aribau, 175, Principal 1 B, 08036 Barcelona, Spain (professional representative).

On 16/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 529 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 104 513 for the figurative mark . The opposition is based on European Union trade mark registration No 17 759 408 for the figurative mark and Romanian trade mark registrations No 141 293 for the figurative mark and No 68 447 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 18/12/2019, the opponent filed notice of opposition against the contested application and invoked Article 8(1)(b) EUTMR. On 05/03/2020, which is after the expiry of the opposition period, the opponent argued in its observations that the grounds of the opposition were Article 8(1)(b) and Article 8(5) EUTMR.

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4) and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is ticked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered to be properly indicated if the earlier mark(s) is/are identified and it is possible to unequivocally identify the grounds.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Article 2(2)(c) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

In this case, the opponent failed to indicate Article 8(5) EUTMR in the opposition period and cannot extend the grounds of the opposition once the opposition period has expired. Therefore, the opposition is not admissible insofar as it is based on Article 8(5) 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 services

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

European Union trade mark registration No 17 759 408 (earlier mark 1):

Class 35: Consultancy relating to business document management; business management assistance; business management services; business file management; computerised business management [for others]; information and data compiling and analyzing relating to business management; computerised file management; administration, billing and reconciliation of accounts on behalf of others; providing business management and operational assistance to commercial businesses; providing consumer product information and advice relating to software; wholesale services in relation to computer software; retail services in relation to computer software, digitization, process automation, business document management; business management organisation consultancy; advertising, marketing and promotional services related to computer software, digitization, process automation and business document management; assistance and advice regarding business documents management; compilation and systemization of information into computer databases; collection and systematisation of information into computer databases; computerised data management; computerised data processing; data management services; electronic data processing; computerised business information processing services; office functions.

Class 42: Digitization of documents; software as a service [SAAS] services; consulting services in the field of software as a service [SaaS]; data duplication and conversion services, data coding services; electronic storage services for archiving databases, images and other electronic data; computer software technical support services; consultancy services relating to computer programming; design of computer software; installation, maintenance and updating of computer software; research, development, design and upgrading of computer software; systems analysis (computer -); software design; software development; computer software programming services; creation of computer programmes for data processing; creation, maintenance and adaptation of software; electronic storage of documents and archived e-mails; software consultancy services; consultancy and information services relating to the design, programming and maintenance of computer software; advice and development services relating to computer software; advisory services relating to the rental of computers or computer software; advisory services relating to the use of computer software; providing information, advice and consultancy services in the field of computer software; design, development and implementation of software; computer software integration.

Romanian trade mark registration No 141 293 (earlier mark 2):

Class 42: Services in the fields of science and technology as well as related research and design; industrial analysis and research services; hardware and software design and development.

Romanian trade mark registration No 68 447 (earlier mark 3):

Class 42: Computer programming; computer software design; installing computer programs, maintaining and upgrading computer programs; design of computer systems; computer systems analysis; conversion of data or documents from physical to electronic form; creating and maintaining websites for others; conversion of data and computer programs; hosting web sites.

The contested services are the following:

Class 35: Professional business consultancy; business information; compilation of information into computer databases; computerized file management; provision of an online marketplace for buyers and sellers of goods and services; systemization of information into computer databases; typing; updating and maintenance of data in computer databases; web indexing for commercial or advertising purposes; word processing.

Class 42: Computer software consultancy; computer technology consultancy; conversion of computer programs and data, other than physical conversion; development of computer platforms; digitization of documents [scanning]; information technology [IT] consultancy; providing information on computer technology and programming via a web site; outsource service providers in the field of information technology; providing search engines for the internet; software as a service [SaaS].

Class 45: Legal research; legal document preparation services; legal administration of licences; legal services in relation to the negotiation of contracts for others; legal watching services; licensing of intellectual property; licensing of computer software [legal services]; licensing [legal services] in the framework of software publishing; online social networking services; personal letter writing.

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 services in Class 35

Compilation of information into computer databases; computerised file management; systemization of information into computer databases are identically contained in the lists of services of the contested sign and earlier mark 1.

The contested professional business consultancy; business information at least overlap with the opponent’s business management services of earlier mark 1. Therefore, they are identical.

The contested typing; updating and maintenance of data in computer databases; word processing are included in the broad category of, or overlap with, the opponent’s office functions of earlier mark 1. Therefore, they are identical.

The contested provision of an online marketplace for buyers and sellers of goods and services are similar to the opponent’s business management assistance of earlier mark 1, as they coincide in their purpose, end users and providers.

The contested web indexing for commercial or advertising purposes are advertising services or services carried out to help the sale of products or services. Therefore, there are some similarities with the opponent’s advertising, marketing and promotional services related to computer software, digitization, process automation and business document management of earlier mark 1. They have the same purpose, end users and providers. Therefore, the abovementioned services are similar.

Contested services in Class 42

Software as a service [SaaS] is identically contained in the lists of services of the contested sign and earlier mark 1.

The contested computer software consultancy; computer technology consultancy; information technology [IT] consultancy; providing information on computer technology and programming via a web site at least overlap with the opponent’s consultancy and information services relating to the design, programming and maintenance of computer software of earlier mark 1. Therefore, they are identical.

The contested conversion of computer programs and data, other than physical conversion; digitization of documents [scanning] at least overlap with the opponent’s data duplication and conversion services of earlier mark 1. Therefore, they are identical.

The contested development of computer platforms; outsource service providers in the field of information technology; providing search engines for the internet are at least similar to the opponent’s design, development and implementation of software as they usually coincide in provider, relevant public and distribution channels.

Contested services in Class 45

All the contested services are dissimilar to all the services covered by the opponent’s earlier marks as their natures, purposes and methods of use are different. They do not coincide in their provider or share the same distribution channels. Furthermore, these services are neither complementary nor in competition. They also target different end users.

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 services found to be identical or similar are specialised services directed at business customers with specific professional knowledge or expertise in the information technology (IT) and business management sectors. Therefore, the relevant public for assessing likelihood of confusion will be the professional public.

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

c) The signs

Earlier mark 1 Earlier mark 2 Earlier mark 3
Earlier trade marks	Contested sign

The relevant territories are the European Union and Romania.

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).

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Earlier marks 1 and 2 contain the conjoined verbal elements ‘doc’ and ‘process’, which are visually divided by different colours (light and dark blue in earlier mark 1 and light and dark green in earlier mark 2). Earlier mark 3 contains the same conjoined verbal elements but these are depicted in blue and have no visual dividers. However, as explained below, both words are meaningful. This will assist the relevant public in recognising them, especially within the context of the relevant services.

The contested sign contains the conjoined verbal elements ‘Doc’ and ‘Pro’, which are visually separated by the use of different colours (orange and grey) and upper-case letters. Similarly, these two verbal elements have concrete meanings, which will additionally support their immediate separation.

The signs’ verbal elements are composed of English words. The use of English is common in the IT and business management sectors, which target the professional public. Professionals in all European Union countries who work in the abovementioned sectors have at least an elementary knowledge of English and usually a more profound knowledge of this language in their respective fields of activity.

The verbal components of the signs are commonplace and extensively used as part of professional terminology in the IT and business management services sectors. Therefore, the relevant public will understand the English meanings of the signs’ verbal elements, as described below.

The common verbal element ‘Doc’ is a widespread and commonly used abbreviation for ‘document’. This verbal element will allude to the fact that the relevant services are somehow related to document processing. Therefore, it is at most weak.

The earlier marks’ verbal element ‘process’ means ‘a series of actions that produce a change or development’ (information extracted from Collins Dictionary used on 16/02/2021 at https://www.collinsdictionary.com/dictionary/english/process) and, when combined with the preceding verbal element ‘doc’, complements the abovementioned perception, namely document processing, which is defined as ‘the creation, handling, labelling, and modification of text documents, such as in word processing and in the indexing of documents for retrieval based on their content’ (information extracted from The Free Dictionary by Farlex used on 16/02/2021 at https://encyclopedia2.thefreedictionary.com/document+processing). Bearing in mind that the relevant services are or can be related to document processing, the earlier marks’ verbal element ‘process’ is at most weak.

Earlier marks 1 and 2 contain figurative elements, resembling the percentage symbol, ‘%’, which is reversed in earlier mark 2. Furthermore, they will be seen more as referring to the first letters of the verbal elements ‘doc’ and ‘process’, especially as they are depicted in the same colours (light and dark blue in earlier mark 1 and light and dark green in earlier mark 2). Earlier mark 3 also contains a figurative element, which will be seen more as ‘dp’, which are the first letters of the verbal elements ‘doc’ and ‘process’. Particularly on account of the presentation and fanciful stylisation of these figurative elements in all the earlier marks, they are considered, as such, distinctive. However, in the overall impression of all the earlier marks, these figurative elements will not have more impact on consumers than the verbal elements ‘doc’ and ‘process’ because they will be seen as referring to the first letters of these words.

Earlier mark 3 also contains a blue rectangle, which is not distinctive as it is decorative and merely serves to highlight the information contained therein. Therefore, the consumers will not attribute any trade mark significance to it.

Earlier marks 2 and 3 contain additional verbal elements depicted in a much smaller size, ‘the business sense of the future’ (earlier mark 2) and ‘Connecting people, documents and processes’ (earlier mark 3). Both are laudatory slogans of limited (if any) distinctiveness. Moreover, both play a secondary role in earlier marks 2 and 3 due to their small size and marginal position.

The contested sign’s verbal element ‘Pro’ will be perceived by the relevant public as an abbreviation of the word ‘professional’. Consumers will perceive this verbal element as an indication that the services for which protection is sought are directed at professionals and will, consequently, barely perceive it (if at all) as an indicator of commercial origin.

The contested sign’s figurative element depicts two superposed rectangles with rounded edges, one of which contains three horizontal lines. One rectangle is framed in orange and the other is framed in grey. The combination of these rectangles resembles documents, further reinforcing the meaning of the verbal element ‘Doc’. Similarly, its degree of distinctiveness is at most weak.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the common weak verbal element ‘Doc’ and in the letters ‘Pro’ (and their sounds). However, the signs differ in the earlier marks’ additional letters ‘cess’ (and their sounds), positioned after the common letters ‘Pro’, resulting in a visually longer verbal element (‘process’ v ‘Pro’) and, aurally, in an additional syllable in the earlier marks, leading to different rhythm and intonation. Therefore, these additional letters have a significant impact on the overall visual and aural impression of the signs.

Although the public’s attention is usually focused on the beginning of the signs, in this case, the difference at the end of the earlier marks will be immediately perceived by the relevant public because the coinciding verbal element ‘Doc’ is at most weak and because the signs’ verbal elements ‘process’ and ‘Pro’ have different lengths, rhythms and intonations.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them. However, they cannot be regarded as visually similar for that reason alone. In addition, the public is not, in general, aware of the exact number of letters in a mark and, consequently, will not notice, in the majority of cases, that the conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Furthermore, the signs differ in the remaining verbal elements of earlier marks 2 and 3, ‘the business sense of the future’ and ‘Connecting people, documents and processes’, respectively, both of which have a limited (if any) degree of distinctiveness. In addition, the signs differ visually in their figurative elements, structures and colours.

Therefore, the signs are visually similar to a low degree and aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs coincide in the concept of their common verbal element ‘Doc’, their additional verbal elements ‘process’ of the earlier marks and ‘Pro’ of the contested sign evoke differing concepts, which, in combination with the common verbal element, form expressions with entirely different concepts, namely ‘document processing’ (earlier marks) and ‘document for professionals’ (contested sign). Account is taken of the signs’ figurative elements, which refer to, or reinforce, the signs’ verbal element(s). Furthermore, the additional slogans of earlier marks 2 and 3 have a limited (if any) distinctiveness. As the signs will be associated with different meanings, the signs are not conceptually similar.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

Although the opponent argued that its earlier trade marks have a normal degree of distinctiveness, the opponent claimed Article 8(5) EUTMR as a ground of the opposition and stated that the applicant would profit from the opponent’s reputation.

If this is to be considered as a claim for enhanced distinctiveness of the earlier marks, it must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted two printouts of its website regarding its activities and one article from www.seenews.com, which states that the opponent ‘provides digital transformation services to over 3,200 global customers and 25,000 users’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use or reputation. The information on the opponent’s website does not come from an independent source and, moreover, even with the article from the other website, it does not show the long-standing use of the marks in question by the opponent or provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not demonstrate that the trade marks are known by a significant part of the relevant public. There is no information about the number of visitors to the websites mentioned nor any other information about the use or reputation of the earlier marks.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non‑distinctive or weak elements in the marks.

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).

The services found to be identical or similar target the professional public whose degree of attention varies from average to high. The distinctiveness of the earlier marks is normal.

The signs are visually similar to a low degree and aurally similar to a below-average degree insofar as they coincide in their common weak verbal element ‘Doc’ and in the letters ‘Pro’. However, the earlier marks contain the additional letters, ‘cess’, which have a significant impact on the overall visual and aural impression of the signs, as explained above. Furthermore, the signs differ in their figurative elements, structures and colours.

Although 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), this does not automatically mean that they tend to retain the similarities of the marks more than the differences.

The fact that consumers will generally remember the beginning of a mark rather than the end cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (12/06/2018, T‑136/17, cotecnica MAXIMA (fig.) / MAXIM Alimento Superpremium (fig.), EU:T:2018:339, § 60). Consequently, it is the overall impression produced by the marks that should be taken into consideration and not any individual parts in isolation.

Contrary to the opponent’s arguments, the mere coincidence in some letters/sounds is not sufficient to conclude that the relevant consumer would confuse the marks and consider that the services in question, bearing the marks, were from the same undertaking or economically linked undertakings.

Moreover, the signs are not conceptually similar. According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (12/01/2006, C‑361/04, Picaro, EU:C:2006:25, § 20). Therefore, the conceptual differences between the signs weigh in significantly when assessing the likelihood of confusion in the present case, as the divergent concepts conveyed by the marks further distance them from each other from the consumers’ perspective. This substantially reduces the likelihood of confusion between the conflicting signs to such an extent that it can be safely ruled out, even despite the identity or similarity between the services.

Consequently, contrary to the opponent’s arguments, in the overall impression of the signs, the similarities are sufficiently outweighed by the differences between the signs, which are clearly perceptible and would not be overlooked, even if the signs were used for identical or similar services.

In light of the above, and notwithstanding the principles of interdependence and imperfect recollection, the visual, aural and conceptual differences between the signs are sufficient to preclude a likelihood of confusion in the mind of the average consumer.

There is no reason to assume that the relevant public, with an average or high degree of attention, will be misled into thinking that the identical or similar services bearing the conflicting signs come from the same undertaking or, as the case may be, from economically linked undertakings.

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)(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

Dagný Fjóla JÓHANNSDÓTTIR

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.