OPPOSITION Nо B 3 118 620

 

Features Analytics SA, 2 rue de Charleroi, 1400 Nivelles, Belgium (opponent), represented by Sonnenberg Harrison Partners, 48 rue Saint-Honoré, 75001 Paris, France (professional representative)

 

a g a i n s t

 

EYYES GmbH, Dr. Franz Wilhelmstraße 2a, 3500 Krems An Der Donau, Austria (applicant), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative).

On 04/06/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 118 620 is upheld for all the contested goods and services, namely:

Class 9: Apparatus for recording data; encryption apparatus; information technology devices; multimedia apparatus and instruments.

Class 37: Computer hardware and telecommunication apparatus installation, maintenance and repair.

Class 42: Scientific and technological services and research; industrial analysis and research services; research services; technical research; planning, creation, installation and maintenance of computer software; electronic data storage; operation of search engines for the internet and intranets; hosting services and software as a service and rental of software; design and development of computer hardware; engineering; engineering services; technical planning; technical consultancy; quality control; technological planning services; design services.

2. European Union trade mark application No 18 168 003 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 168 003 (figurative mark), namely against some of the goods and services in Classes 9 and 37 and all of the services in Class 42. The opposition is based on international trade mark registration No 1 332 460 designating the European Union ‘EYEDES’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

At the time of the filing of the notice of opposition, the contested sign was held in the name of AVI Systems GmbH. Subsequently during the proceedings, ownership of the contested sign was transferred to EYYES GmbH, the recordal of which was confirmed to the new owner by the Office on 04/08/2020 and the opponent was duly informed in the Office’s notification dated 31/08/2020 (albeit in other opposition proceedings). Therefore, the proceedings continue between the new owner of the contested sign and the opponent.

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, inter alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; sales machines and mechanisms for apparatus with prepayment; cash registers, calculating machines, data-processing apparatus and computers; telecommunications hardware and software.

Class 42: Scientific and technological services as well as research and design services relating thereto; industrial analysis and research services; design and development of computers and of software; design and development of fraud-detection software and hardware, advice in connection with the aforementioned services.

The contested goods and services are the following:

Class 9: Apparatus for recording data; Encryption apparatus; Information technology devices; Multimedia apparatus and instruments.

Class 37: Computer hardware and telecommunication apparatus installation, maintenance and repair.

Class 42: Scientific and technological services and research; Industrial analysis and research services; Research services; Technical research; Planning, creation, installation and maintenance of computer software; Electronic data storage; Operation of search engines for the Internet and intranets; Hosting services and software as a service and rental of software; Design and development of computer hardware; Engineering; Engineering services; Technical planning; Technical consultancy; Quality control; Technological planning services; Design services.

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 apparatus for recording data is included in the broad category of, or overlaps with, the opponent’s apparatus for recording sound or images. Therefore, they are identical.

The contested information technology devices; multimedia apparatus and instruments are included in the broad category of, or overlap with, the opponent’s data processing apparatus and computers. Therefore, they are identical.

The contested encryption apparatus are devices that scramble data such as readable text so it can only be read by the person who has the secret code, or decryption key. It helps provide data security for sensitive information. These goods are similar to the opponent’s data processing apparatus and computers as they usually coincide in their producers, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 37

The contested computer hardware and telecommunication apparatus installation, maintenance and repair is similar to the opponent’s computers in Class 9 as they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 42

Scientific and technological services and research; industrial analysis and research services; research services; technical research are identically contained in both lists of services (with slight changes in wording).

The contested design services include as a broader category the opponent’s design of computers and of software. Since the Office cannot dissect ex officio the broader category of the contested services, they are considered to be identical to the opponent’s services.

The contested planning, creation, installation and maintenance of computer software; design and development of computer hardware are included in the broad category of, or overlap with, the opponent’s design and development of computers and of software. Therefore, they are identical.

The contested technical planning; technical consultancy; technological planning services are included in the broad category of, or overlap with, the opponent’s technological services. Therefore, they are identical.

Engineering is a branch of science. It follows that the contested engineering; engineering services, are included within the broader category of, or otherwise overlap with, the opponent’s scientific services. Therefore are included in the broad category, they are identical.

The contested electronic data storage; software as a service are similar to the opponent’s computers in Class 9 as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested operation of search engines for the Internet and intranets; hosting services and rental of software are similar to the opponent’s design and development of computers and of software as they are usually provided by the same companies, and coincide in relevant public and distribution channels.

The contested quality control relates to the process of certifying that a certain product or service has passed quality assurance tests and meets qualification criteria stipulated in contracts, regulations or specifications. These services are performed by consultants and specialists in the fields concerned in the context of different technical, industrial and scientific areas, as well as, in particular, in the IT field as part of the quality assurance process. As such, they are linked with, inter alia, the opponent’s design and development of computers and of software. The services under comparison may, for example, be part of the same process by which computer programs are created and checked before being brought to the market (e.g. custom software development and testing). They may be offered by the same specialists (i.e. IT manufacturers) and may target the same public through the same channels to satisfy the same or complementary needs. Therefore, these services are 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average (e.g. apparatus for recording data) to above average (e.g. encryption apparatus), depending on the price, specialised nature, or terms and conditions of the goods and services purchased/provided.

c) The signs

EYEDES
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 consists of the word ‘EYEDES’. While for part of the relevant public this word is meaningless, it cannot be excluded that another part may dissect the earlier mark into the components ‘EYE’ and ‘DES’, by perceiving the English word ‘EYE’ therein, coming at the start of this word. In that regard, although the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The same component (‘EYE’) might also be perceived by part of the relevant public in the contested sign ‘EYYES’, consisting of the stylised said verbal element above which is depicted a figurative device, in the colours blue and white, of a diamond shape within which is an oval shape,.

As the figurative device bears no reference to the relevant goods and services it is normally distinctive. That said, 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). This is so in the instant case given that the said figurative device does not convey any clear semantic meaning beyond the said diamond and round shapes.

The stylisation of the verbal element ‘EYYES’, which does not obscure the perception of the letters thereof, despite the fact that the letters ‘Y’ thereof overlap somewhat, will be regarded as being primarily decorative and so not play a substantial role in the trade mark appreciation of this sign.

Neither of the marks is meaningful in certain territories, for example in the Spanish-speaking part. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public where both signs will be distinctive.

Visually, the verbal element of each sign at issue is almost the same length (being six and five letters respectively), coinciding in the their respective first and last two letters (‘EY’ and ‘ES’), differing in the central letter(s) of the signs, namely ‘ED’ of the earlier mark and the letter ‘Y’ of the contested sign. Moreover, the signs differ with respect to the figurative/stylised elements of the contested sign which, however, have less impact than the verbal elements for the reasons explained above. On this basis, the Opposition Division considers that the signs are visually similar to an below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EYE’ and the last letter ‘S’, since the additional ‘Y’ of the contested sign will not have any aural impact. They only differ in the sound of the central letters ‘DE’ of the earlier mark. On this basis, the Opposition Division considers that the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

e) Global assessment, other arguments and conclusion

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.

In the present case, the signs have been found to be visually and aurally similar to a below average and average degree respectively for the public under analysis and conceptually neutral. The goods are partly identical and partly similar. The earlier mark enjoys normal distinctive character and the degree of attention is either average or above average.

Taking the relevant factors into consideration, including the identity or similarity of the goods and services, the Opposition Division considers that the similarities between the signs at issue are not outweighed by the differences pertaining to the differing letter(s)/sound(s) placed at the centre of the marks, where they can be more easily overlooked, as well as to the figurative/stylised elements of the contested sign which have less impact as explained at section c) above. Moreover, for the public under analysis, neither sign has any meaning that could help to distinguish them.

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).

Considering all the above, there is a likelihood of confusion by the Spanish-speaking part of the relevant public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 332 460 ‘EYEDES’ (word mark) designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services, including those for which a higher-than-average degree of attention may be exercised.

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

Anna ZIÓŁKOWSKA

Kieran HENEGHAN

Sofía SACRISTÁN MARTÍNEZ

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.