OPPOSITION Nо B 3 120 635

Cegeka-dsa B.V., Bastion 4, 3905 NJ Veenendaal, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)

a g a i n s t

Bits4bricks GmbH, Neutorstraße 3, 55116 Mainz, Germany (applicant), represented by Richardt Patentanwälte, Wilhelmstr. 7, 65185 Wiesbaden, Germany (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 120 635 is partially upheld, namely for the following contested goods and services:

Class 9: All the contested goods in this class.

Class 35: All the contested services in this class.

Class 42: All the contested services in this class.

2. European Union trade mark application No 18 168 810 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 14/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 168 810 ‘bits4bricks’ (word mark). The opposition is based on European Union trade mark registration No 17 814 211 ‘BITS FOR BRICKS’ (word mark). The opponent invoked Article 8(1)(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.

a) The goods and services

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

Class 9: Computer software, including in the form of software packages; computer software, including software used for database management; apparatus for reproduction and storage of data; data carriers, including analogue, digital, magnetic and disc data carriers; video and sound recordings; publications in electronic format; the aforesaid goods being for use in ICT solutions for supporting business processes.

Class 35: Setting up and managing data files and databases; collecting and managing data in a central database; making an inventory of and processing data files; office functions for processing and expanding various databases into a central database; data search in computer files for others; advertising; business management; business administration; office functions; business organisation and business economics consultancy; the aforesaid services relating to the delivery of ICT solutions for supporting business processes.

Class 42: IT services; computer programming, development and engineering; testing of computer hardware and software; ICT specialists for managing computer projects, other than maintenance and installation of computer hardware; development, testing and maintenance of software for websites, internet applications and extranet applications; design of computer hardware and software for computer systems and networks, and of electronic databases; implementation and maintenance of software, including for network applications; development of IT architecture for ICT specialists; consultancy in relation to computer hardware and software, provided by helpdesks; computer website design; the aforesaid services relating to the delivery of ICT solutions for supporting business processes.

The contested goods and services are the following:

Class 9: Computer programs and apps, in particular for the real estate industry.

Class 35: Business consultancy and advisory services, in particular for the real estate industry, in particular for the digitalisation of the real estate industry.

Class 36: Real estate services; real estate consultancy; corporate real estate advisory services.

Class 42: IT consultancy, advisory and information services, in particular relating to the real estate industry; design, creation and development of computer programs, in particular for the real estate industry; design and writing of computer programs, in particular for the real estate industry, information technology digitalisation consultancy in the real estate industry.

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 terms ‘in particular’ and ‘including’, used in the applicant’s and in the opponent’s lists of goods and services, indicate that the specific goods and 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).

However, the term ‘being’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 computer programs and apps, in particular for the real estate industry include, as a broader category, or overlap with, the opponent’s computer software, including in the form of software packages; the aforesaid goods being for use in ICT solutions for supporting business processes. This is because the term ‘in particular’ does not restrict computer programs and apps only to those for the real estate industry. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested business consultancy and advisory services, in particular for the real estate industry, in particular for the digitalisation of the real estate industry overlap with the opponent’s business organisation and business economics consultancy; the aforesaid services relating to the delivery of ICT solutions for supporting business processes. Therefore, they are identical.

Contested services in Class 36

The contested real estate services; real estate consultancy; corporate real estate advisory services are dissimilar to all the opponent’s goods and services because they do not coincide in any of the similarity criteria. It is unlikely that they are provided by the same entities and they do not have the same distribution channels. Moreover, they are not in competition.

The opponent claimed that there is complementarity between its business management; business administration; office functions; business organisation and business economics consultancy and the contested services. However, real estate services are the provision of assistance in the purchasing, selling or renting of real estate, which typically entail finding an appropriate house or property, making it available for potential buyers and acting as an intermediary. The opponent’s services in Class 35 are intended to support or help other businesses to do or improve business. These services have a different nature and purpose from the contested real estate services and are usually rendered by a different kind of company. Services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). However, there is no such connection between the compared services. Even if the services were complementary, complementarity is not usually conclusive on its own for a finding of similarity between goods and services.

Contested services in Class 42

The contested design, creation and development of computer programs, in particular for the real estate industry include, as a broader category, or overlap with, the opponent’s development, testing and maintenance of software for websites, internet applications and extranet applications and design of computer software for computer systems and networks, and of electronic databases; the aforesaid services relating to the delivery of ICT solutions for supporting business processes. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s goods.

The contested IT consultancy, advisory and information services, in particular relating to the real estate industry include, as a broader category, or overlap with, the opponent’s consultancy in relation to computer hardware and software, provided by helpdesks; the aforesaid services relating to the delivery of ICT solutions for supporting business processes. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s goods.

The contested design and writing of computer programs, in particular for the real estate industry, information technology digitalisation consultancy in the real estate industry overlap with the opponent’s design of computer software for computer systems and networks, and of electronic databases. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

In particular, the goods and services of the earlier mark target the professional public exclusively and the contested goods and services target the general and professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

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. For example, the degree of attention will be high in relation to business consultancy and advisory services and it may be average in relation to some computer applications.

c) The signs

BITS FOR BRICKS	bits4bricks
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).

Information technology professionals are generally considered to be more familiar with the use of technical and basic English vocabulary than the average consumer, irrespective of territory (27/11/2007, T‑434/05, Activy Media Gateway, EU:T:2007:359, § 38). Furthermore, the general public is also familiar with basic English terminology in the field of information and communication technology. Professionals in the field of business management and consultancy are also assumed to have a good command of English.

The earlier mark is the English words ‘bits for bricks’, which have no meaning as a whole but will be perceived as the sum of their components. Although the contested sign is depicted as one element, the presence of the number ‘4’ in the middle of the sign will lead the relevant public to dissect the sign into three components: ‘bits’, ‘4’ and ‘bricks’. The number ‘4’ is likely to be perceived and pronounced as ‘for’ in the context of the other English words as it is a common abbreviation of the preposition ‘for’.

Bearing in mind that the relevant goods and services include computer software and design and development thereof, as well as IT consultation services, the common element ‘bits’ will be perceived as the plural form of ‘[a] unit of information’ (information extracted from Oxford English Dictionary on 12/05/2021 at https://www.oed.com/view/Entry/19519?rskey=9zvTlT&result=4&isAdvanced=false#eid). Therefore, this element is considered non-distinctive for these goods and services and has a normal degree of distinctiveness for the remaining services in Class 35.

The common element ‘bricks’ is the plural form of ‘brick’, meaning ‘[a] building material consisting of moulded blocks, typically made from clay, which are dried or baked to a hard, stonelike consistency’ (information extracted from Oxford English Dictionary on 12/05/2021 at https://www.oed.com/view/Entry/23167?rskey=6Sg3Sg&result=1&isAdvanced=false#eid). This element is distinctive in relation to the goods and services.

However, the degree of distinctiveness, and whether the elements/components of the signs are meaningful, is immaterial since the signs are on equal footing.

Consequently, the differences between the signs are limited to the number of elements (three in the earlier mark and one in the contested sign) and the middle element ‘for’ of the earlier mark being replaced by the number ‘4’ in the contested sign.

It follows that the signs are visually highly similar and aurally and 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) 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 distinctiveness of the earlier trade mark ‘must be seen as high or at least as normal’ but did not file any evidence in order to prove such a claim.

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 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

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.

The goods and services are partly identical and partly dissimilar. They target the public at large and customers with specific professional knowledge or expertise whose degree of attentiveness may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually highly similar and aurally and conceptually identical. In particular, the marks coincide entirely in the elements ‘bits’ and ‘bricks’ and aurally in the elements ‘for’ and ‘4’.

The differences between the signs lie in the number of elements, and in the differing element ‘for’ of the earlier mark and ‘4’ of the contested sign, which do not significantly affect the visual similarities. Therefore, these differences cannot outweigh the similarities between the signs, and they are not sufficient to exclude a likelihood of confusion.

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). Therefore, it could not be ruled out that even professionals with a high degree of attentiveness may overlook the differences and confuse the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the professional public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 814 211. 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.

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

The rest of the contested goods and 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.

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

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

Biruté SATAITE-GONZALEZ

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.