OPPOSITION Nо B 3 117 306

 

Ingeniería de Proyectos Marinos, S.L., Subida a San Roque, 8, 36360 Camos (Santa Baia) (Pontevedra), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Shenzhen Botsurpass Intelligent Robot Co., Ltd., A501, 5/f, Shanshui Building, Nanshan Yungu Innovation Industrial Park, No. 4093, Liuxian Avenue, Taoyuan Street, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo Ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

 

On 25/03/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 117 306 is rejected in its entirety.

 

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

 

REASONS

 

On 29/04/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 194 512 (figurative mark), but considering the division requested by the applicant for the list of goods and services, it is considered that the opposition is against all the services in Class 42. The opposition is based on European Union trade mark registration No 18 051 133, . 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 services

 

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

Class 37: Construction; maintenance, repair and installation of all kinds of processing systems, installations and machinery for the food industry.

Class 42: Research and development services; technological services; industrial analysis and research services; engineering services; technical supervision and inspection.

The contested services are the following:

 

Class 42: Product development for others; surveying; biochemical research and analysis; meteorological information; vehicle roadworthiness testing; industrial design; construction drafting; research in the field of artificial intelligence; design and development of image processing software; cartography services.

The contested product development for others; research in the field of artificial intelligence; design and development of image processing software are included in the opponent’s broad category of research and development services. Therefore, they are identical.

The contested surveying; construction drafting; cartography services are included in the opponent’s broad category of technological services. Therefore, they are identical.

The contested vehicle roadworthiness testing overlaps with the opponent’s technical supervision and inspection as sometimes the technical inspection requires to run some tests. Therefore, they are identical.

The contested biochemical research and analysis are included in, or overlap with, the opponent’s broad category of industrial analysis and research services. Therefore, they are identical.

The contested meteorological information overlaps with the opponent's broad category of research services. Therefore, they are identical.

The contested industrial design overlaps with the opponent's industrial analysis and research services. 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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise which display a high degree of attention in relation to rare purchases implying a high involvement on the part of the public, also for expensive and technologically advanced services such as biochemical research and analysis.

 

c) The signs

 

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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

Although the signs are composed of one verbal element, for part of the public it will be broken 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). Therefore, it cannot be excluded that a part of the public might recognize the element ‘MAR’ in the earlier mark and ‘SMART’ in the contested sign.

 

For example, the verbal element ‘MAR’ of the earlier mark could be associated by the Spanish-speaking part of the public with ‘sea’. This element is normally distinctive since it has no relation to the relevant services.

The verbal element ‘SMART’ of the contested sign is a basic English word. It is used in relation to modern technologies or in business to describe something as being ‘astute, as in business; clever or bright’ (information extracted from Collins Dictionary on 25/03/2021 at https://www.collinsdictionary.com/dictionary/english/smart). Furthermore, it is a term commonly used in the field of information technology to mean ‘intelligent’ (08/11/2017, R 2430/2016‑4, smartID+, § 15). It is also used to refer to applying modern technologies and providing innovative solutions in the field of marketing, for example in the context of facilitating access to marketing through the use of online platforms, online advisory services and the use of digital signage. Consequently, the verbal element ‘Smart’ in the contested mark merely describes the way in which the services are rendered. Therefore, it is considered non-distinctive for part of the public for the services directly connected to IT and weak for the rest of the services.

However, other part of the public, such as Bulgarian- and Romanian-speaking part of the public, will not artificially dissect the contested sign and, for this part of the public, it has no meaning and is distinctive.

 

The Opposition Division will first examine the opposition in relation to the part of the public for which the signs have no meaning and have a normal degree of distinctiveness.

 

For the purposes of the comparison of the signs and bearing in mind that similarities between them are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective, as this is the most advantageous scenario for the opponent, namely that the above element ‘SMART’ is distinctive for all the relevant services.

 

Therefore, both signs have no meaning for the relevant public and are, therefore, distinctive.

 

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

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

 

Visually, the signs coincide in the letters ‘(*)OSMAR(*)’. The General Court has held that the same 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 share the some letters, but they cannot, for that reason alone, be regarded as visually similar. Moreover, the letters within the respective words of the contested sign are depicted in different colours and typography.

The signs also differ in their first letters ‘J’ in the earlier mark versus ‘F’ in the contested sign, and in the letter ‘T’ placed at the end of the contested sign. The different letters are placed at the beginning of the signs where consumers generally tend to focus 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. Therefore, the fact that the signs start with a different letter is relevant in the present case.

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 ‘(*)OSMAR(*)’, present identically in both signs. However, the pronunciation differs in the sound of their initial letters ‘J’ v ‘F’, respectively in the letter ‘T’ placed in the ending position in the contested sign.

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

 

Conceptually, neither of the signs has a meaning for the public 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 as a whole has no meaning for any of the 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

 

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 services are identical and target the specialised public whose degree of attentiveness is high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to a low degree, aurally similar to a below-average degree and conceptually neutral. Therefore, even if there is no conceptual difference between the signs, in view of the overall low degree of similarity between the signs, consumers are unlikely to believe that the services concerned offered under the signs in dispute originate from the same or economically linked undertakings, even if the services are identical.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details or aspects. The similarities found cannot prevail for the reasons established above. Therefore, in light of the above considerations, the similarities between the signs are not sufficient to lead to a likelihood of confusion on the part of the public on which the analysis is focused, especially taking into account the high degree of attention of the relevant public.

Likewise, for the part of the public who perceives a meaning for the element ‘SMART’ in the contested sign as outlined above, the immediate conceptual differences between the signs are sufficient to exclude any likelihood of confusion between the signs for this part of the public.

Finally, if either of the verbal elements or words in either of the signs had any other meaning in any other parts of the relevant territory, any such meaning would not be present in the other mark and could thus only constitute a conceptual difference between them. Therefore, any other concept that either of the signs could potentially convey in any other parts of the relevant territory would only enable those consumers to distinguish between the signs more easily, and the outcome could not be different with respect to those consumers.

Considering all the above, there is no likelihood of confusion for any part of the public in the relevant territory. 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

 

 

María Clara IBÁÑEZ FIORILLO

Francesca DRAGOSTIN

Valeria ANCHINI

 

 

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.