OPPOSITION Nо B 3 113 890

Euronics Italia S.p.A., Via Montefeltro 6/A, 20156 Milano, Italy (opponent), represented by Perani & Partners S.p.A., Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative)

a g a i n s t

Е.М.Н. Systems, 2 Dr. Ivan Bogorov Str., 9002 Varna, Bulgaria (applicant), represented by Silviya Ovcharova, 113, Evlogi i Hristo Georgievi Blvd., floor 1, Office 6, 1504 Sofia, Bulgaria (professional representative).

On 27/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 113 890 is upheld for all the contested goods and services, namely:

Class 9: Software; computer software for accessing databases; navigation software; downloadable electronic maps; interactive databases; marine navigation apparatus; marine communication apparatus; electronic databases; computer digital maps; environmental control software; GPS software; map software; GPS navigation devices; computer databases; GPS navigation systems; environmental monitoring software; geographic information system [GIS] software.

Class 42: Cartography and mapping; preparation of maps in digital form; services for the design of maps; marine chart updating; environmental monitoring services; marine chart updating services; compilation of environmental information; mapping services; maintaining databases; marine surveying services; design and development of computer databases; creation of GPS maps; environmental hazard assessment; software installation; software creation; environmental consultancy services; environmental surveys.

2. European Union trade mark application No 18 166 324 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 12/03/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 166 324 ‘ECAP’ (word mark), namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 11 572 898 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

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.

However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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: Data processing equipment, computers, computer software, all mentioned except for goods in the field of data protection.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software, in particular IT services, all mentioned except for services in the field of data protection.

The contested goods and services are the following:

Class 9: Software; computer software for accessing databases; navigation software; downloadable electronic maps; interactive databases; marine navigation apparatus; marine communication apparatus; electronic databases; computer digital maps; environmental control software; GPS software; map software; GPS navigation devices; computer databases; GPS navigation systems; environmental monitoring software; geographic information system [GIS] software.

Class 42: Cartography and mapping; preparation of maps in digital form; services for the design of maps; marine chart updating; environmental monitoring services; marine chart updating services; compilation of environmental information; mapping services; maintaining databases; marine surveying services; design and development of computer databases; creation of GPS maps; environmental hazard assessment; software installation; software creation; environmental consultancy services; environmental surveys.

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

The term ‘in particular’, used in the opponent’s list of services in Class 42, 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

The contested software; computer software for accessing databases; navigation software; environmental control software; GPS software; map software; environmental monitoring software; geographic information system [GIS] software are identical to the opponent’s computer software, all mentioned except for goods in the field of data protection because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested marine navigation apparatus; marine communication apparatus; GPS navigation devices; GPS navigation systems are identical to the opponent’s data processing equipment, all mentioned except for goods in the field of data protection, because the opponent’s goods include, or overlap with, the contested goods.

The contested interactive databases; electronic databases; computer databases are made up of different types of data, usually stored in or managed by computers, tablets and/or smartphones. They need software to be viewed, stored, updated, read, etc. Therefore, the aforementioned contested goods are similar to the opponent’s computer software, all mentioned except for goods in the field of data protection since they can target the same consumers, have the same distribution channels and points of sale, and are likely to originate from the same kind of companies. Moreover, they can be complementary.

The contested downloadable electronic maps; computer digital maps are similar to the opponent’s computer software, all mentioned except for goods in the field of data protection since they can coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 42

The contested software creation; design and development of computer databases are identical to the opponent’s design and development of computer software, in particular IT services, all mentioned except for services in the field of data protection, because the opponent’s services are included in, or overlap with, the contested services.

The contested cartography and mapping; preparation of maps in digital form; services for the design of maps; marine chart updating; environmental monitoring services; marine chart updating services; compilation of environmental information; mapping services; marine surveying services; creation of GPS maps; environmental hazard assessment; environmental consultancy services; environmental surveys are identical to the opponent’s scientific and technological services and research and design relating thereto, all mentioned except for services in the field of data protection, because the opponent’s services include, as a broader category, the contested services.

The contested software installation; maintaining databases and the opponent’s design and development of computer software, in particular IT services, all mentioned except for services in the field of data protection have the same nature. They usually coincide in provider, relevant public and distribution channels. Furthermore, they are complementary. Therefore, they are highly similar.

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 mostly directed at business customers with specific professional knowledge or expertise but some of them may also be directed at the public at large (e.g. software and downloadable electronic maps).

Taking into account the specialised nature, the price and/or terms and conditions of the goods and services purchased, the public’s degree of attentiveness may vary from average to high in relation to the goods in Class 9 and, it is likely to be high in relation to the services in Class 42 in view of the specialised nature of those services.

c) The signs

	ECAP
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 ‘Ecat’, depicted in rather standard dark blue title-case letters, and the verbal element ‘Data Manager’, depicted in much smaller letters, below it. The verbal element ‘Data Manager’ depicted in standard title-case letters of which the first letters ‘D’ and ‘M’ are orange whilst the remaining letters are dark blue. On the right side of the verbal elements, there are three orange, green and blue squares of different sizes with rounded corners, which are merely decorative and will, therefore, be perceived as weak. Furthermore, 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). Therefore, the figurative element in the earlier mark will have less impact than the verbal elements.

The verbal element ‘Ecat’ is meaningless. Therefore, it has an average degree of distinctiveness.

The verbal element ‘Data Manager’ contains the English words ‘data’ which refers to ‘[f]acts and statistics collected together for reference or analysis’ (information extracted from Oxford English Dictionary on 02/04/2021 at https://www.lexico.com/en/definition/data) and ‘manager’ which means, inter alia, ‘[a] program or system that controls or organizes a peripheral device or process’ (information extracted from Oxford English Dictionary on 02/04/2021 at https://www.lexico.com/en/definition/manager). Therefore, the expression ‘Data Manager’ may refer to a computer programme that organises, for example, a database or specific information about a subject. Taking into account that the relevant goods and services are data processing equipment, computer software, all mentioned except for goods in the field of data protection in Class 9 and scientific and technological services and research and design relating thereto; design and development of computer hardware and software, in particular IT services, all mentioned except for services in the field of data protection in Class 42 which may all be related to data management, at least for the English-speaking part of the public in the relevant territory, this verbal element is non-distinctive as such, as it is merely informing that the goods and services concerned are intended to provide assistance with, or are focused on, the management of data. Therefore, for the part of the non-English-speaking public that may perceive the verbal element ‘Data Manager’ as meaningless, at least when considered as a whole, it has an average degree of distinctiveness. However, due to its size and secondary position within the earlier mark, the verbal element ‘Data Manager’ has lesser impact than the verbal element ‘Ecat’, even for the part of the public that might perceive it as meaningless.

The verbal element ‘Ecat’ and the figurative element are co-dominant (visually more eye-catching) than the verbal element ‘Data Manager’ in view of their larger size and position within the earlier mark.

The contested sign is the word mark ‘ECAP’. With regard to word marks, the use of upper- or lower-case letters is immaterial (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57) insofar as it does not depart from the usual way of writing, as in the present case. In its observations, the applicant argued that ‘ECAP’ stands for ‘Environmental Compliance Assistance Platform’. The applicant further argued that this abbreviation is widely used in all marketing and advertisement materials of the applicant itself as well as in the applicant’s software products offered under the contested sign. However, apart from the fact that the applicant did not provide any evidence to support its claims, the signs have to be compared as they are registered or applied for. The fact that they may be used in combination with other signs or, as a result of a marketing strategy, be promoted in a particular way is irrelevant. The assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks (21/01/2016, T‑846/14, SPOKeY, EU:T:2016:24, § 26; 15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59). In this respect, there is nothing in the contested sign that could suggest to consumers that ‘ECAP’ is an abbreviation for ‘Environmental Compliance Assistance Platform’ and, in the absence of any evidence to the contrary, ‘ECAP’ cannot be considered to be an established or well-known acronym with this meaning for the goods and services concerned. Moreover, the applicant argued that the contested sign could otherwise be associated with the concept of ‘electronic captain’ or ‘e-cap’, especially in the branch of navigational software. However, the usual abbreviation of ‘captain’ is not ‘cap’ but rather ‘capt’, and there is no obvious reason why the letter ‘E’ in ‘ECAP’ would be singled out and perceived as a reference to ‘electronic’. Therefore, irrespective of whether ‘ECAP’ is perceived as consisting of an acronym or of a fanciful word, it will be perceived as conveying no particular concept and thus as a meaningless verbal element and is, therefore, distinctive to an average degree.

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.

Since the verbal element ‘Data Manager’ contains English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union.

Visually, the signs coincide in the letters ‘ECA*’. They differ in the last letters, ‘T’ versus ‘P’, of their verbal elements ‘Ecat’ versus ‘ECAP’, and in the slight stylisation and colour of this element in the earlier mark. The signs also differ in the verbal element ‘Data Manager’ and the figurative element of the earlier mark, which have no counterparts in the contested sign. However, the verbal element ‘Data Manager’ is non-distinctive for the part of the public under analysis and also plays a secondary role due to its smaller size and subordinate position within the earlier mark. The figurative element in the earlier mark is of purely decorative nature and, therefore, the most distinctive element of the earlier mark is the verbal element ‘ECAT’, which differs from the contested sign ‘ECAP’ in the last letter.

Taking into account the distinctiveness and position of the differing elements of the earlier mark, as well as the fact that the only word of the contested sign almost entirely reproduces the most distinctive verbal element of the earlier mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ECA*’, present identically in both signs. The pronunciation differs in the sound of the letters ‘***T’ in the earlier mark and ‘***P’ in the contested sign. The verbal element ‘Data Manager’ is non-distinctive and of a secondary nature for the reasons set out above. Therefore, this verbal element is likely to be omitted when referring to the earlier mark verbally, since consumers naturally tend to shorten long marks in order to reduce them to elements that are easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48).

Therefore, the signs are aurally highly similar.

Conceptually, the part of the public under analysis will perceive the meaning of the verbal element ‘Data Manager’ in the earlier mark as explained above. However, the contested sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the conceptual difference between the signs is due to a non-distinctive element and, therefore, it has rather limited weight in the comparison. Consequently, the conceptual aspect plays a limited role in the assessment of the similarity of the signs for the part of the public under analysis.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. Namely, in its observations, the opponent claimed that the earlier mark enjoys more-than-average degree of distinctiveness per se due to the lack of a conceptual connection between the verbal element ‘Ecat’ and the goods and services for which the earlier mark is registered.

However, when an earlier mark is not descriptive (or is not otherwise non-distinctive), it is considered as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted, showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, the opponent did not submit any such evidence. A mark will not normally have a higher degree of distinctiveness just because there is no conceptual link to the relevant goods and services.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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 goods and services are partly identical and partly similar (to varying degrees). They target mostly business customers with specific professional knowledge or expertise and some of them may also target the public at large. The public’s degree of attentiveness may vary from average to high depending on the goods and services in question. The signs are visually similar to an average degree, aurally highly similar and even if the signs are conceptually not similar, for the part of the public under analysis, the conceptual aspect has only a little influence in the assessment of the similarity of the signs, for the reasons set out above in section c) of this decision. The inherent distinctiveness of the earlier mark, as a whole, is normal.

Although the earlier mark contains several elements and the contested sign only one verbal element, the differing elements of the earlier mark are non-distinctive or weak and will have less impact in the overall impression of the earlier mark, whilst the most distinctive element in the earlier mark is the verbal element ‘Ecat’. The contested sign, ‘ECAP’, and the verbal element ‘Ecat’ of the earlier mark only differ in one letter at the end, whilst all the remaining letters are identical and placed in the same sequence.

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). Taking into account that the verbal elements ‘Ecat’ and ‘ECAP’ are meaningless for the relevant public, the difference in the last letter may easily go overlooked in the consumers’ imperfect recollection of the signs. This cannot be excluded even for the public that displays a high degree of attentiveness since even those consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

It is common practice on the market for undertakings to make variations of their trade marks, for example, by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public that rarely have the chance to directly compare two trade marks and must rely on the imperfect recollection that they have kept in their mind, is likely to mentally register the fact that they coincide in the verbal element ‘ECAT’/‘ECAP’, and may perceive the signs as variations of the same mark or otherwise believe that the identical or similar (to varying degrees) goods and services offered under those signs originated from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the public in the relevant territory. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 572 898. 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

Sam GYLLING

Birute SATAITE-GONZALEZ

María Clara IBÁÑEZ FIORILLO

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.