OPPOSITION Nо B 3 127 538

Elisa Oyj, Ratavartijankatu 5, 00520 Helsinki, Finland (opponent), represented by Roschier Brands, Attorneys Ltd., Kasarmikatu 21 A, 00130 Helsinki, Finland (professional representative)

a g a i n s t

Tomislav Kovačević, Ujevićeva Ilica 12, 10000 Zagreb, Croatia (applicant), represented by Maja Wosner, Zagrebacka Cesta 87, 10000 Zagreb, Croatia (professional representative).

On 03/08/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 127 538 is upheld for all the contested goods.

2.	European Union trade mark application No 18 229 821 is rejected in its entirety.

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

REASONS

On 05/08/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 229 821 for the figurative mark . The opposition is based on European Union trade mark registration No 16 337 602 for the word mark ‘ELISA’. 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

The goods on which the opposition is based are, inter alia, the following:

Class 9: Software for environmental solutions; Software (computer -) [recorded]; Computer programs, recorded; Computer programs (downloadable software); Game software for computers and mobile phones; Object programs for computers and mobile phones; Interface software for computers and mobile phones; Portable media players; Computer software; Downloadable software for publishing and sharing digital media and information via global computer and communication networks; Instant messaging software; Electronic mail software; Communication software for the electronic exchange of sound, data, video and graphics accessible via computer, mobile, wireless and telecommunication networks; Communication and computer software for electronic calendar and electronic address list; Computer software for processing images, graphics, audio, video and text; Computer software development tools; Computer software for use in developing computer programs; Video and audio negotiation software; Displays and apparatus for video and audio-conferencing; Apparatus for the transmission of data, sound and images; Computers, tablet computers, telephones and touch screen telephones.

The contested goods are the following:

Class 9: Computer software to automate data warehousing; Downloadable mobile applications for the transmission of data; Computer programmes for data processing; Data processing equipment; Downloadable computer software for the transmission of data; Data and file management and database software; Software for searching and retrieving information across a computer network; Computer software for database management; Computer software to enable the searching of data; Computer programmes for data processing; Computer utility programs for data compression; Data storage programs; Databases; Computer database servers; Databases (electronic); Computer software for creating searchable databases of information and data; Computer software to enable retrieval of data; Computer networking and data communications equipment; Computer hardware for remotely accessing and transmitting data; Computer network-attached storage [NAS] hardware; Data processing programs; Computer software to enable searching and retrieval of data; Database synchronization software; File synchronization software; Data transmission networks; Data exchange units; Databases; Computer software for application and database integration; Electronic databases recorded on computer media; Interactive databases; Electronic data processing equipment; Big data management software; Computer programs for accessing, browsing and searching online databases; Computer software for authorising access to data bases; Databases (electronic); None of the aforesaid goods relating to the detection, control and geographical tracking of underground networks.

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.

The contested computer software for creating searchable databases of information and data; software for searching and retrieving information across a computer network; computer software to enable the searching of data; computer software for database management; computer software to automate data warehousing; computer programmes for data processing (listed twice in the applicant’s specification); computer software to enable retrieval of data; downloadable computer software for the transmission of data; downloadable mobile applications for the transmission of data; data and file management and database software; computer utility programs for data compression; data storage programs; data processing programs; computer software to enable searching and retrieval of data; database synchronization software; file synchronization software; computer software for application and database integration; big data management software; computer programs for accessing, browsing and searching online databases; computer software for authorising access to data bases; none of the aforesaid goods relating to the detection, control and geographical tracking of underground networks are included in, or at least overlap with, the opponent's broad categories of computer software; software (computer -) [recorded]; computer programs, recorded; computer programs (downloadable software). Therefore, they are identical.

The contested data processing equipment; computer database servers; computer networking and data communications equipment; computer hardware for remotely accessing and transmitting data; data transmission networks; data exchange units; electronic data processing equipment; computer network-attached storage [NAS] hardware; none of the aforesaid goods relating to the detection, control and geographical tracking of underground networks; none of the aforesaid goods relating to the detection, control and geographical tracking of underground networks consist of different types of equipment, apparatus and units for data processing and data transmission. Therefore, they cannot be clearly separated from the broad category of the opponent's apparatus for the transmission of data, sound and images. As these goods overlap substantially, they are considered identical.

The contested databases (electronic) (mentioned twice in the applicant’s specification); databases (also mentioned twice); electronic databases recorded on computer media; interactive databases; none of the aforesaid goods relating to the detection, control and geographical tracking of underground networks are organized collections of data that support electronic storage and manipulation of data. They are generally stored and accessed electronically from a computer system. On the other hand, the opponent's computer software; computer programs, recorded includes database software and programs, which are used to create databases and to store, manage, change, search, and extract the information contained within them. To this extent, all the contested databases are at least similar to the opponent's computer software; computer programs, recorded. In addition to their complementary relationship (as the opponent’s software is essential for the creation, proper functioning and access to the electronic databases), these goods also coincide in their distribution channels, they target the same relevant public and normally originate from the same undertakings.

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 found to be identical or at least similar are directed at the public at large and at business customers with specific knowledge or expertise, such as professionals in the IT sector.

The degree of attention will vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

ELISA
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 sign is a word mark composed of a single term: ‘ELISA’. The contested sign is a figurative mark, containing the verbal element ‘ELISA’, depicted in a slightly stylised blue upper case lettering, and a schematic depiction of an airplane to its right.

The verbal element ‘ELISA’, contained in both signs, will be understood throughout the European Union as a female given name. The name in question derives from (and is a popular shorter form thereof) the name Elisabeth, which also has other popular variants and abbreviations, such as Élise, Eliza, Lisa or Elsa. The element ‘ELISA’ is fanciful and normally distinctive in relation to the relevant goods, as it conveys no information whatsoever as regards their essential characteristics.

As regards the figurative component of the contested sign, it consists of the banal stylisation of its verbal element, which in no way obscures it or prevents its immediate recognition, since ‘ELISA’ is depicted in a clearly legible typeface which, despite some degree of stylisation, does not display any striking characteristic; it also includes a schematic depiction of an airplane, which is of a lower than average distinctiveness for the relevant goods (composed of items of software, data processing apparatus and databases), since it may be perceived as alluding to their field of application, specialisation and/or their compatibility with the aviation sector. In addition, it must be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In other words, the verbal element ‘ELISA’ is the most distinctive component of the contested sign, since it is the element to which consumers will readily attribute more trade mark significance, and the element they will use in order to refer to the sign and to the respective goods.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the most distinctive element of the contested sign, ‘ELISA’, reproduces entirely the earlier mark. The signs differ solely in the slight stylisation of this element and in the figurative device of the contested sign.

As previously covered, the public will not pay as much attention to the figurative component of the contested sign as to its verbal element, also bearing in mind its allusive character, which reduces its distinctive capacity. In any case, it is clear that, when faced with the contested sign, the public will instantly identify the verbal element ‘ELISA’ as the main badge of origin contained therein.

Therefore, considering that the most distinctive component of the contested sign reproduces entirely the earlier mark, it is concluded that the signs are similar to a high degree.

Aurally, the contested sign and the earlier mark will be pronounced identically, since the figurative element of the contested sign will not be pronounced. It follows that the marks are aurally identical.

Conceptually, as explained above, both signs will be associated with the same name/nickname. The figurative component of the contested sign introduces the notion of an airplane which is, however, of a weaker than average distinctiveness. Therefore, considering that the signs will be linked with the same female first name and that this is the most distinctive semantic content contained in the contested sign, they are conceptually similar to a higher than 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 asserts that the earlier mark is ‘inherently a strong mark’ because it has no meaning in relation to the relevant goods. In this regard, it must be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T 581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C 379/12 P, H/Eich, EU:C:2013:317, § 71). Since the opponent did not submit any evidence of the alleged enhanced distinctiveness of the earlier mark, this argument must, therefore, be set aside.

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 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 contested goods in Class 9 are identical or at least similar to the goods covered by earlier European Union trade mark registration No 16 337 602.

The earlier mark is inherently distinctive to an average degree.

The signs under comparison are visually highly similar, aurally identical and conceptually similar to a higher than average degree, on account of the coincidence in the verbal element ‘ELISA’, which constitutes the only verbal component of the contested sign and its most distinctive element and the earlier mark as a whole.

As seen above in section c) of this decision, the relevant consumers will not pay as much attention to the stylisation and figurative features of the contested sign as to its verbal component, due to their allusive character, but also because they will be perceived as graphic means intended to embellish the sign and to bring the verbal element in question to their attention. Thus, consumers will focus their attention essentially on the verbal element of the contested sign, ‘ELISA’, as the badge of origin of the relevant goods.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that they have kept in mind (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).

Consequently, given the identity between the earlier mark and the verbal element ‘ELISA’ of the contested sign, it is likely that the relevant public will confuse or, at least, associate the contested sign with the earlier mark in relation to the relevant goods, which are all identical or at least similar.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists 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. Indeed, in the present case, consumers may legitimately believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark, because it is a common market practice to identify new versions of brands, through the use of a renewed or more fashionable typeface, combined with an ornamental and/or allusive figurative element.

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the marks under comparison convey a highly similar overall impression, which is not counteracted by the differences established between them.

Therefore, since the relevant public may believe that the goods at issue come from the same or from economically-linked undertakings, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 16 337 602. 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

	Dorothée SCHLIEPHAKE		Gueorgui IVANOV	Ivo TSENKOV

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.