OPPOSITION Nо B 3 117 049

Opsis Holding AB, c/o Opsis AB, Box 244, SE‑244 02 Furulund, Sweden (opponent), represented by Awa Sweden AB, Matrosgatan 1, SE‑211 18 Malmö, Sweden (professional representative)

a g a i n s t

Γεώργιος Τσούγης, Ermou 1, 13324 Athens, Greece (applicant).

On 25/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 049 is upheld for all the contested services, namely:

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control; scientific technological services.

2. European Union trade mark application No 18 221 819 is rejected for all the contested services. It may proceed for the uncontested services in Class 35.

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

REASONS

On 27/04/2020, the opponent filed an opposition against some of the services of European Union trade mark application No 18 221 819 for the figurative mark , namely against all the services in Class 42. The opposition is based on European Union trade mark No 15 207 715 for the word mark ‘OPSIS’. 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 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical expertise and consultancy; compilation of environmental information; compilation of scientific information; calibration [measuring]; measurement services; testing of scientific, electric, electronic, optical and measuring apparatus and instruments; testing of computer hardware and computer software; rental of scientific, electric, electronic, optical and measuring apparatus and instruments; rental of computer hardware and computer software.

The contested services are the following:

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control; scientific technological services.

Contested services in Class 42

The contested science and technology services; scientific technological services are either included in, or synonymous with, the opponent’s broad category of scientific and technological services and research and design relating thereto. Therefore, they are identical.

The contested design services include, as a broader category, or overlap with, the opponent’s design and development of computer hardware and software. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested IT services include, or overlap with, the opponent’s design and development of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

‘Testing’ is the process of checking if the designed product behaves as required when subjected to various conditions. ‘Authentication’ is the process of determining whether something is, in fact, what it declares itself to be. ‘Quality control’ is the process of setting standards and testing to make sure something, like a product or service, is done correctly. Consequently, these terms overlap with each other to a large extent. Therefore, the contested testing, authentication and quality control include, as broader categories, or overlap with, the opponent’s testing of scientific, electric, electronic, optical and measuring apparatus and instruments; testing of computer hardware and computer software. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

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, some services found to be identical are directed at the public at large (e.g. IT services), but all the services also target the professional public. Therefore, the relevant public is the public at large and the professional public. The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

OPSIS
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark and the components of the verbal element of the contested sign, especially, when the dot is overlooked, could be meaningful in some territories, which could influence the comparison of the signs; in parallel, both signs are predominantly (except the meaning of word ‘BLACK’, see below) meaningless in other territories, where the public will not associate them with any meanings, which influences the likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, German-, Polish- and Slovak-speaking part of the public, for whom the signs are meaningless, except the word ‘BLACK’, and would not associate any meaning with the sequence of characters ‘.is’ (see below).

The earlier mark is the word mark ‘OPSIS’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, in principle, it is irrelevant whether the signs are depicted in upper- or lower-case characters; furthermore, by definition, word marks have no dominant element.

The contested sign is a figurative sign composed of the verbal elements ‘black’ and ‘ops.is’, which are all depicted in bold white lower case on a black rectangular background. All the characters are depicted in standard typeface.

The marginal stylisation of the lettering of the contested sign does not obscure or detract from the immediate comprehension of the verbal elements; as the typeface used is a standard one, the stylisation as such is non-distinctive. Similarly, the black background per se is also non-distinctive, as such rectangular shapes of a single colour are commonplace in commercial signs.

The verbal element ‘black’ is considered to be part of the basic vocabulary that can be understood by the average consumer, even if they are not an English speaker and have only a rudimentary knowledge of English (28/04/2016, T‑803/14, B’lue (fig.) / BLU DE SAN MIGUEL, , EU:T:2016:251, § 27; 07/03/2018, T‑6/17, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:T:2018:119, § 42). This word will be understood as ‘the darkest colour that there is, the colour of the sky at night when there is no light at all.’ by the relevant public throughout the European Union (information extracted from Collins Dictionary online on 10/06/2021 at https://www.collinsdictionary.com/dictionary/english/black). However, this verbal element has no direct or specific meaning in connection with the services in question. The Opposition Division agrees with the opponent that it is common market practice to offer different services under the same brand with the distinction of colour to better segment customers and provide them with more tailored services. This will not decrease the distinctive character of the verbal element ‘black’, however, it will have an effect on how the relevant public will interpret the contested sign as a whole and the role of its components; the verbal element ‘black’ will be perceived as less important than the verbal element that follows. Consequently, the relevant public will rather see the verbal elements ‘ops.is’ as a badge of commercial origin. Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is justified by the fact that 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, this principle does not apply in all cases, especially, when the relevant public sees this element as common in the relevant market sector and, therefore, will see other elements, such as ‘ops.is’, as playing the main role of indicating the business origin of the services.

The verbal element ‘ops.is’ as such does not have any meaning for the services in question; the same is valid for its component ‘ops’ that is placed before the dot.

The applicant claimed that the symbol of a dot and the sequence of letters ‘is’ stands either for ‘Information Systems’ or for a top-level domain. However, the applicant did not substantiate these claims with any evidence. It is not certain that even the professional public would immediately recognise a top-level domain in a sign when it is not accompanied with some additional elements, such as www., https://www., etc.

Consequently, it cannot be excluded that the relevant public (at least its non-negligible part) will not attach any meaning to the sequence of letters ‘is’, and would rather see ‘ops.is’ as one element, where the dot performs an essentially ornamental role. Moreover, considering its size and position (in the middle of the element ‘ops.is’) the dot will not significantly attract the public’s attention and may even be disregarded.

In summary, the specified relevant public will see all verbal elements of both signs as having an average degree of distinctiveness for the services in question as they do not describe them or relate to them in any way.

As regards the contested sign, it is composed of (a) distinctive verbal elements and (b) stylisation, a background and a dot that are not particularly distinctive, since they will be perceived by consumers as ornamental.

Visually, the signs coincide in the letters ‘OPSIS’ and differ in the dot placed before the last two letters of the contested sign. They also differ in the verbal element ‘black’, the stylisation of the lettering and the background of the contested sign. However, these differing elements (except the verbal element ‘black’) are non-distinctive and largely ornamental, and therefore the public will pay very little attention to them.

The coincidence in the letters ‘OPSIS’ will have a strong impact. The difference in the contested sign’s word ‘BLACK’ will have less impact, as explained above. The differing element of a dot placed in the middle of these letters in the contested sign (if even noticed) is not of such a nature as to prevent the immediate recognition that these letters are identical and in the same order in the contested sign as in the earlier mark. Therefore, this coinciding feature will have a significant effect on the relevant public.

Therefore, considering the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OPSIS’, considering that the dot would not introduce any audible difference as it would not be pronounced. The rhythm and intonation of the pronunciation of the coinciding parts will be the same. The pronunciation differs in the sound of the letters of the verbal element ‘black’ of the contested sign, which has no counterpart in the earlier mark, but reference is made to the previous paragraphs with regard to the role of the verbal element ‘black’ within the contested sign. The stylisation and background of the contested sign are not subject to a phonetic assessment.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘black’, included in the contested sign, will be associated with its English meanings as explained above. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested services are all identical to the services covered by earlier mark and the level of attention of the relevant public at large and business customers varies from average to high. The earlier mark has an average degree of distinctiveness.

The signs have an average degree of visual and aural similarity and are not conceptually similar. They coincide in the letters ‘OPSIS’, although the last two letters of the contested sign’s second verbal element are placed after a dot. The signs differ in the verbal element ‘black’ of the contested sign as well as in the dot, stylisation and background of the contested sign. However, the verbal element ‘black’ will likely be given less attention by the public and the dot, stylisation and background will be seen as non-distinctive and largely ornamental. The relevant public will most likely recognise the sequence ‘OPSIS’ in both signs and will pronounce it identically. The coinciding element creates an important impact. In fact, all the letters of the earlier mark are fully reproduced in the contested sign with the only difference of the dot, which cannot play a decisive role due to its size and position.

Moreover, 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 services covered are from the same or economically linked undertakings. 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).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Considering that the earlier mark would be recognised in the verbal element ‘ops.is’ of the contested sign, consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark – such as a more fashionable way to attract consumers’ attention. Consumers may confuse the origins of the services at issue, considering that they are identical to those protected by the earlier trade mark, by assuming that they come from the same undertaking or from economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In this respect, the market practice related to customer segmentation according to the sub-brand and use of colours is covered above in section c) of this decision.

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). In the present case, it is considered that the identity between the relevant services outweighs and offsets certain differences between the signs.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the Czech-, German-, Polish- and Slovak-speaking part of the public, even considering the higher degree of attention of part of the relevant public, which is not sufficient to exclude confusion due to the important similarities between the signs. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 207 715. It follows that the contested trade mark must be rejected for all the contested services.

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, they 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

Jakub MROZOWSKI

Jiří JIRSA

Dorothée SCHLIEPHAKE

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.