OPPOSITION Nо B 3 125 358

 

Scalerion GmbH, Zeisigweg 34, 33106 Paderborn, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Schöttlestr. 8, 70597 Stuttgart, Germany (professional representative) 

 

a g a i n s t

 

Siili Solutions Oyj, Ruoholahdenkatu 21, 00180 Helsinki, Finland (applicant), represented by Roschier Brands, Attorneys Ltd., Kasarmikatu 21 A, 00130 Helsinki, Finland (professional representative).

On 13/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 125 358 is upheld for all the contested goods and services.

2.	European Union trade mark application No 18 204 421 is rejected in its entirety.

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

REASONS

 

On 30/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 204 421 ‘SKALER’ (word mark). The opposition is based on European Union trade mark registration No 18 014 433, ‘Scalerion’ (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, inter alia, the following:

Class 42: Software as a service [SaaS].

The contested goods and services are the following:

Class 9: Computer software; data storage devices; computer software for application and database integration; AI software; machine learning software; machine learning software for analysis; artificial intelligence software for analysis; artificial intelligence and machine learning software; software for the integration of artificial intelligence and machine learning in the field of big data; robotic process automation [RPA] software; optimisation software; big data management software; computer software relating to telecommunication networks; data processing equipment and computers; data collection and distribution networks; computer software for communication, control, administration, business, internal, self-service and management systems; machine readable information carriers; software for smart contracts; machine-to-machine [M2M] applications; document automation software; software for automated business process discovery (ABPD); decision-making software; application software for wireless devices; testware; computer software to enable the searching of data; software for product development; industrial automation software; software for monitoring, analysing, controlling and operating functions.

Class 42: Technical expert, consultancy and advisory services; engineering design; design, programming, installation, implementation, maintenance and updating of computer software and systems; IT services; consultancy, support and engineering services relating to computer software, systems and information technology; software engineering; technical project planning; computer programming; computer analysis; project management in the field of electronic data processing; computer project management services; industrial analysis and research services; computer services for the analysis of data; troubleshooting of computer software problems; design and development of computer hardware and software; electronic data storage; design and development of testing and analysis methods; technical data analysis services; advanced product research in the field of artificial intelligence; development and testing of computing methods, algorithms and software; data security services relating to computerised information; computerised information storage; design and development of electronic data security systems; computerised business data storage services; design and development of software for artificial intelligence; research and engineering technology relating to computerized automation in industrial methods; electronic storage of files and documents; testing, research and monitoring of computer software and systems; engineering services relating to robotics; engineering testing; engineering and computer-aided engineering services; quality control relating to computer software; providing artificial intelligence computer programs on data networks; consultancy services relating to computer networks using mixed software environments; consultancy services for analysing information systems; consultancy services for designing information systems; compilation of information relating to information systems.

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 data storage devices; machine readable information carriers; data processing equipment and computers; data collection and distribution networks are similar to the opponent's software as a service [SaaS] because they coincide in the relevant public and distribution channels. Moreover, they are complementary.

The contested computer software; computer software for application and database integration; AI software; machine learning software; machine learning software for analysis; artificial intelligence software for analysis; artificial intelligence and machine learning software; software for the integration of artificial intelligence and machine learning in the field of big data; robotic process automation [RPA] software; optimisation software; big data management software; software for smart contracts; machine-to-machine [M2M] applications; document automation software; software for automated business process discovery (ABPD); decision-making software; application software for wireless devices; computer software to enable the searching of data; software for product development; industrial automation software; computer software relating to telecommunication networks; computer software for communication, control, administration, business, internal, self-service and management systems; software for monitoring, analysing, controlling and operating functions; testware are similar to the opponent's software as a service [SaaS] because the latter is a model for the distribution of software where customers access software over the Internet. The software could be hosted by its producers or made available to clients on the internet and licensed on a subscription basis. Therefore, these contested goods and the opponent’s services compared are distributed through the same channels to the same public. Furthermore, they are in competition and originate from the same companies.

Contested services in class 42

The contested technical expert, consultancy and advisory services; engineering design; design, programming, installation, implementation, maintenance and updating of computer software and systems; IT services; consultancy, support and engineering services relating to computer software, systems and information technology; software engineering; technical project planning; computer programming; computer analysis; project management in the field of electronic data processing; computer project management services; industrial analysis and research services; computer services for the analysis of data; troubleshooting of computer software problems; design and development of computer hardware and software; electronic data storage; design and development of testing and analysis methods; technical data analysis services; advanced product research in the field of artificial intelligence; development and testing of computing methods, algorithms and software; data security services relating to computerised information; computerised information storage; design and development of electronic data security systems; computerised business data storage services; design and development of software for artificial intelligence; research and engineering technology relating to computerized automation in industrial methods; electronic storage of files and documents; testing, research and monitoring of computer software and systems; engineering services relating to robotics; engineering testing; engineering and computer-aided engineering services; quality control relating to computer software; providing artificial intelligence computer programs on data networks; consultancy services relating to computer networks using mixed software environments; consultancy services for analysing information systems; consultancy services for designing information systems; compilation of information relating to information systems and the opponent’s software as a service [SaaS] all belong to the IT sector or to sectors closely related thereto. Therefore, some of these contested services are identical to the opponent’s services or clearly belong to the same homogeneous sector and they are all - at least - provided by the same companies, target the same public and can be sold through the same distribution channels. It follows, therefore, that all these contested services are at least similar to a low degree to the opponent’s software as a service [SaaS].

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.

The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the contested mark that were found to be identical or similar (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23; 10/07/2009, C‑416/08 P, Quartz, EU:C:2009:450, dismissed).

The opponent’s software as a service [SaaS] in Class 42 target both the general and professional public, insofar as these services can be seen as an electronically delivered alternative for recorded software. Furthermore, and contrary to the applicant’s arguments which claims that all the contested goods and services are only addressed to the specialised public, various contested goods and services, for instance those providing technical advice and IT-related consultancy in Class 42, are aimed at the professional and general public. Owners of home computers or laptops will often seek ‘technical consultancy’. Clearly such consumers will want in-depth advice on the hardware and or/software they have purchased, or wish to purchase (see, to this effect, 7/11/2010, R 923/2009‑2, TRUVO / TRUVEO (fig.), § 23-24). In contrast other goods and services only target the professional public whose degree of attention varies from average to higher than average (09/09/2010, T‑106/09, Archer Maclean’s Mercury, EU:T:2010:380, § 20; 10/10/2019, T‑700/18, Dungeons / Dungeons & dragons et al., EU:T:2019:739, § 35-40; 28/11/2019, T‑665/18, Vibble / Vybe et al., EU:T:2019:825, § 21). Notwithstanding this, in principle the professional public has a high degree of attention when purchasing a specific product, when, as in the case at hand, those consumers have special background knowledge or experience in relation to the specific goods and services.

It follows that although the opponent’s goods and services can be intended for the general public and for a professional or specialised public, at the very least some of the goods and services covered by the trade mark application are directed solely at professional public (e.g. software engineering; technical project planning). Therefore, for such goods and services this is the only public by reference to which the assessment of the likelihood of confusion must be carried out (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

Taking into account all the above, the goods and services found to be similar to varying degrees target the public at large and/or business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

 

Scalerion	SKALER
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 the word ‘Scalerion’ and the contested sign is the word ‘SKALER’. The protection of a word mark concerns the word as such. Therefore, it is irrelevant if the earlier mark is in upper- and lower-case letters and the contested sign in upper-case letters, since the signs are written in a manner that does not deviate from the usual way of capitalising words.

Although, the signs as a whole are meaningless for the relevant public, as alleged by the applicant, it is likely that, at least the professional public in the IT and technological sector will perceive in both signs an allusion or connotation to the English terms ‘scale, scalable or scalability’ since these are terms used to refer to expanding or reducing a system’s capacity (i.e. scaling is the process of increasing or decreasing the capacity of the system by changing the number of processes available to service requests. Scaling out a system provides additional capacity, while scaling in a system reduces capacity). Furthermore, on the Internet, a website or a service is said to ‘scale’ if its software and available hardware can maintain performance when the quantity of users suddenly increases. This is because 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). Therefore, taking into consideration the goods and services concerned and the fact that the words ‘Scalerion’ (earlier mark) and ‘SKALER’ (contested sign) are as a whole invented or fantasy words, they are considered to have a below average degree of distinctive character for the specialised public in the field of technology and IT as they allude to a certain characteristic or purpose of the goods and services.

Likewise, the general English-speaking public it is likely to perceive in the earlier mark ‘Scalerion’ and the contested sign ‘SKALER’ an allusion or connotation to the word scale, namely, ‘a set of levels or numbers which are used in a particular system of measuring things or are used when comparing things; ‘when referring to the scale of something, one is referring to its size or extent, especially when it is very big‘. Therefore, bearing in mind the goods and services concerned, the earlier mark ‘Scalerion’ has a below average distinctive character since it may allude to the characteristics or purpose of the services (e.g. SaaS relating to measurement software) as so it is the contested sign ‘SKALER’ for part of the goods and services (e.g. computer software for measuring something in Class 9). However, since for other relevant goods and services ‘SKALER’ does not allude to any characteristic of the goods and services (i.e. IT services) it is normally distinctive for those goods and services.

Finally, for another part of the general non-English-speaking public (e.g. the Latvian or Slovenian, for which the equivalent words for scale are mērogs and lestvica, respectively), the signs are completely meaningless and thus, distinctive to a normal degree.

Visually and aurally, the signs coincide in the pronunciation and letters ‘S*ALER(***)’. The signs differ in their second letters (‘C’ vs ‘K’), albeit for a substantial part of the public their sound is identical, and in the three final letters, ‘ION’, of the earlier mark (including their pronunciation), which have not counterpart in the contested sign.

Bearing in mind the conclusion reached above as to the distinctive character of the sole element of the signs, it is concluded that for the part of public for which the signs have a below average distinctive character, they are visually similar to a below average degree and aurally to an average degree. This is so because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Since 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.

However, for the part of the general public for which the signs are meaningless and distinctive to a normal degree, the signs are visually an aurally similar to at least an average-degree.

Conceptually, for a part of the general public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For another part of the public, although the signs will be associated with the concept of ‘scale’, such concept mainly refers to the purpose or a characteristic of the goods and services and, therefore, its capacity to indicate the commercial origin is reduced accordingly. It is, therefore, concluded that for this part of the public the signs are conceptually similar to a below average degree.

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. Considering what has been stated above in section c) of this decision, for the specialised public and the general English-speaking public the distinctiveness of the earlier mark must be seen as being below average. The mark has a normal degree of distinctiveness for the remaining part of the public, for which it has no meaning.

e) Global assessment, other arguments and conclusion

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).

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.

The 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).

As set out above, the goods and services at issue are similar (to varying degrees). The degree of attentiveness of the specialised public is mainly high while it varies from average to high for the general public.

As explained above some of the goods and services covered by the trade mark application are directed solely at professional public and for such goods and services 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). The remining goods and services are directed to both the general and specialised public.

For the specialised public the signs will be associated to the concept of ‘scale, scalable and scalability’ as described above, and the signs are visually and conceptually similar to a below average degree and aurally similar to an average degree. For them the earlier mark has a below average distinctive character because in spite of including the letters ‘scale’, which can refer to the characteristics or purpose of the services as explained above, ‘Scalerion’ is a fantasy word which per se is meaningless.

The applicant argues that as the beginning of the earlier mark ‘scale’ is a commonly used descriptive term in the field of IT and technology the opponent cannot be granted an exclusive right to the terms ‘scale or scaler’ in Classes 9 and 42. In this context it is worth noting that, the Court has emphasised on several occasions that, even, a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of a weaker than normal distinctiveness, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). This is particularly so in the present case where the overall impression conveyed by the signs as a whole is similar since the contested sign is almost fully included in the earlier mark. Therefore, it is likely that the speciliased consumer, even when displaying a higher degree of attention, will at least associate the contested sign with the earlier mark. This is because even consumers with a high degree of attention are not immune to trade mark confusion, especially taking into account the degree of similarity between the marks in question.

The same considerations set out above apply to the the general English-speaking public, for which ‘Scalerion’ also has a below average distinctive character.

For the sake of completeness, it follows that there is also likelihood of confusion for the general public for which the signs are meaningless and have a normal degree of distinctiveness. Since for this part of the public the signs are visually and aurally similar to at least an average degree whereas conceptually they cannot be associated to any concept.

Indeed, contrary to the applicant’s arguments it is conceivable that consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). This is true even for the services found to be at least similar to a low degree.

In its observations, the applicant also argues that the earlier trade mark has a low distinctive character because of the existence of many trade marks including the word ‘scale’. In support of its argument the applicant refers to some trade mark registrations in European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘scale’ throughout the EU territory.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 18 014 433. It follows that the contested trade mark must be rejected for all the contested goods.

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

 

 

Helena GRANADO CARPENTER

María del Carmen COBOS PALOMO

Julia GARCÍA MURILLO

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.