OPPOSITION Nо B 3 121 807

 

Comité Olímpico Español, Arequipa, 13, 28043 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Leica Microsystems CMS GmbH, Ernst-Leitz-Str. 17-37, 35578 Wetzlar, Germany (applicant), represented by Baker & McKenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative).

On 30/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 121 807 is rejected in its entirety.

 

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

REASONS

On 19/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 190 222 ‘ImageCompass’ (word mark). The opposition is based on European Union trade mark registration No 18 033 564, (figurative 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: Software for enabling writing, sending, uploading, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing, organising, showing, displaying, tagging, recording, sharing or otherwise providing electronic media or information via global computer networks or other communications networks; Computer programs for personal information management; Software for use in recording, organising, transmitting, handling and reviewing text, data, audio and video files and electronic games in relation to television, computers, music players, video players, media players, mobile telephones, smartphones, tablets and other portable, electronic, digital and hand-held devices; Computer software enabling users to program and distribute audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication networks; Computer game software and programs enabling users to play games with mobile phones; Downloadable computer games software; Computer software for use with satellite and GPS navigation systems for navigation, route and trip planning, and electronic mapping; computer software for travel information systems for the provision or rendering of travel advice and for information concerning hotels, landmarks, museums, public transportation, restaurants and other information regarding travel and transport; computer software to be used for viewing and/or downloading electronic maps; Integrated software used as an electronic function in mobile telephones, allowing users to play and download electronic games, listen to and download ring tones and music, and view and download screensavers; Holders adapted for mobile phones; Portable computers; Computers; MP3 players; Television apparatus; Semiconductors; Digital cameras; DVD players.

Class 42: Hosting of websites providing digital contents; Technical support services, namely, troubleshooting in the nature of diagnosing and repairing application software problems for mobile phones, personal computers, portable computer, TV and MP3 player; design, development, maintenance and management of application software for mobile phones , personal computers, portable computer, TV and MP3 player; Maintenance, repair and updating of computer software, computer operating system software, computer utility software; Providing information relating to computer software via the internet and other computer and electronic communication networks; Providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; Consultancy in the field of computer hardware, computer software consultancy; Multimedia and audio-visual software consulting services; Computer programming; Support and consultation services for developing computer systems and databases; Information relating to computer hardware or software provided on-line from a global computer network or the Internet; Creating and maintaining websites; Design and development of web-sites featuring multimedia materials; Hosting the web sites of others; Information, advisory and consultancy services relating to all the aforesaid.

The contested goods and services are the following:

Class 9: Software, apps and mobile apps for digital microscopes and image analysis systems; digital microscope cameras with software for microscopes; software operating systems for digital microscopes; cameras, interfaces and storage media for microscopes for data analysis and/or data recording; software for image analysis and image recording for microscopes; software for operational workflows in and between scientific and medical institutions for image data recorded by microscopes.

Class 42: Development of software for digital microscopes; development of software for digital image analysis systems for microscopic examination and analysis.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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.

Although the opponent’s goods and services can be intended for the general public and for a professional or specialised public, it is not disputed that the goods and services covered by the trade mark application are directed solely at persons operating in scientific and medical institutions. Therefore, this is the only public likely to confuse the trade marks in question (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). In the present case, the goods and services assumed to be identical are, thus, directed at business customers with specific professional knowledge or expertise in the fields of science and medicine.

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

c) The signs

 

	ImageCompass
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 consisting of a verbal element which it is highly likely to be read by the majority of the relevant public either as ‘CONPooS’ or ‘CONPQQS’. Since neither perception has any meaning for the relevant public, this element is, therefore, distinctive to a normal degree. The first three letters are bold upper-case letters, while the fourth and last are upper-case letters. The figurative elements reminiscent of the letters ‘oo’ or ‘QQ’ also resemble on/off buttons with their middle bar in fuchsia pink and the remaining part in black. The high stylisation of these two letters will not prevent the vast majority of the public from reading the verbal element as ‘CONPooS’ or ‘CONPQQS’ without any difficulty. This is because consumers intuitively look for pronounceable elements in signs by which the sign can be referred to.

The figurative elements bear no clear link to the goods and services and they are, therefore, normally distinctive. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The typeface of the sign is not elaborate or sophisticated in a way that will draw the consumer’s attention away from the verbal element.

The earlier mark has no element that could be considered clearly more dominant than other elements.

On the register, the earlier mark is referred to as ‘CONPAAS’ and the opponent in its submissions refers to the earlier mark in the same way. However, the Opposition Division considers this perception very unlikely as the two figurative symbols in the earlier mark are placed between printed characters and the shape of the printed letter ‘a’ (in lower-case) or ‘A’ (in upper-case) have no resemblance to the figurative elements resembling on/off buttons depicted in the sign. Furthermore, it must be mentioned that it is irrelevant that the party refers to its mark by a particular verbal element in its submissions or if the mark when applied for was designated by the applicant with a particular verbal element, because the consumer will not be assisted by that information on encountering the sign as registered or applied for. Therefore, the arguments of the opponent referring to its trade mark as ‘CONPaaS’ will be set aside.

For the purposes of this comparison and bearing in mind that similarities between signs are higher for the part of the relevant public that reads the earlier mark as ‘CONPooS’, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent.

The contested sign is the word mark ‘ImageCompass’. Even if it is composed of one verbal element, the relevant professional 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). This is particularly so in the case at hand due to the irregular capitalization of the letter ‘C’ in the middle of the sign and the ‘I’ at its beginning. For this reason, the sign will be broken down into two verbal elements: ‘Image’ and ‘Compass’. ‘Image-’ will be understood by relevant public such as the French- English- and German-speaking public as a representation of the external form of a person or thing. Moreover, account must be taken that the IT professionals and scientists 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, 48 for the IT field(11/12/2008, C-57/08 P, EU:C:2008:718, dismissed); 09/03/2012, T-207/11, Isense, EU:T:2012:121, § 21-22 for German professionals in the medical field). Bearing in mind the goods and services concerned this component is weakly distinctive as it refers to their purpose. ‘Compass’ is an English word that will be understood as an instrument containing a magnetized pointer which shows the direction of magnetic north and bearings from it and it will be normally distinctive as it has no relation to the goods and services in question.

Visually, the signs coincide in the letters ‘(*)CO*P**S’, that is, four out of seven letters of the earlier mark and four of twelve of the contested sign. The differences between the signs lie in their length and in the earlier mark’s stylisation including the figurative elements making up the letters ‘O’ (although, as explained above, figurative elements have less of an impact on consumers than words). The signs also differ in the first part ‘Image-‘ of the contested sign (which is weakly distinctive) and in the differing letters (‘M’ and ‘AS’ in the contested sign versus ‘N’ and ‘OO’ in the earlier mark).

It should also be noted that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35) and that, for the assessment of the similarity of the signs, the entirety of the signs has to be considered rather than simply parts of the signs. Therefore, it would be wrong to completely discard parts or elements of signs from the comparison just because they have a weak distinctive character. In addition, the coinciding letters ‘*CO*P**S’ are placed at the end of the contested sign. This has a significant impact on the comparison of the signs because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, it is worth mentioning that the General Court has held that 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 share some of them, but they cannot, for that reason alone, be regarded as visually similar.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘(*)CO*P**S’, present identically in both signs. The pronunciation differs in the sound of the first component ‘IMAGE-’ of the contested sign, which has no counterpart in the earlier mark as well as in the letters ‘M’ and ‘AS’ versus ‘N’ and ‘OO’ of the contested sign and earlier mark respectively. The signs further differ in their beginning, which contributes to their differing rhythm and overall intonation.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, (i.e. on/off buttons vs Image and compass) the signs are conceptually not 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 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.

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.

e) Global assessment, other arguments and conclusion

As mentioned above, 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).

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 contested goods and services have been assumed to be identical to the opponent’s goods and services. The degree of attention of the relevant public may vary from higher than average to high. The earlier mark has a normal degree of distinctive character. The signs are visually and aurally similar to a low degree while conceptually the signs are not similar.

The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35). As already indicated above, it would be wrong to discard comparing components of the signs just because they are less distinctive.

Taking into account all the relevant factors and, in particular the low level of similarity between the signs in conflict and the higher degree of attention displayed by the relevant consumer at time of the purchase, the Opposition Division concludes that there is no likelihood of confusion. This is because the differences between the signs arising from their different length and configurations will be easily recalled by consumers, which will make them unlikely to confuse the origin of the goods and services at issue, or assume that these goods and services come from the same undertaking or from economically linked undertakings. This absence of a likelihood of confusion equally applies to the part of the public which reads the earlier mark as ‘CONPQQS’, since for them the last four letters will be pronounced letter by letter. Consequently, the signs would have, at most, a very remote aural similarity.

Considering all the above, even assuming that the goods and services are identical, 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

Helen Louise MOSBACK

María del Carmen COBOS PALOMO

Marzena MACIAK

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.