OPPOSITION No B 2 192 196

Fanajoy, S.L., Tudela, 17 Bajo, 17002 Pamplona (Navarra), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

S Quadrat Projekt- und Beteiligungsgesellschaft mbH & Co. KG, Galmeistr. 8, 59929 Brilon, Germany (applicant), represented by Dts Patent- & Rechtsanwälte Schnekenbühl und Partner MBB, St.-Anna-Str. 15, 80538 Munich, Germany (professional representative).

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 192 196 is upheld for all the contested goods, namely

Class 9: Computer hardware; Measuring, signalling, checking (supervision) and teaching apparatus and instruments (included in class 9); Sound and image carriers; Apparatus for receiving, recording, transmission, processing or reproduction of sound, images or data; Machine-readable data recording carrier; Data processing equipment and computers; Optoelectronic directories, in particular information directories on CD-ROM; Computer software, in particular for searching for, retrieving and comparing information and materials.

2. Community trade mark application No 11 491 412 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 11 491 412, namely against all the goods in Class 9. The opposition is based on, inter alia, Community trade mark registration No 444 059. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 444 059.

1. The goods

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, except for apparatus and instruments for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not; apparatus for recording, transmission or reproduction of sound or images, except for apparatus for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not or displaying commercial information; magnetic data carriers, except for magnetic loyalty cards and for computer programs; recording discs; automatic vending machines and mechanisms for coin-operated apparatus, except for machines and mechanisms for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not; calculating machines, data processing equipment and computers, except for equipment and computers for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Computer hardware; Measuring, signalling, checking (supervision) and teaching apparatus and instruments (included in class 9); Sound and image carriers; Apparatus for receiving, recording, transmission, processing or reproduction of sound, images or data; Machine-readable data recording carrier; Data processing equipment and computers; Optoelectronic directories, in particular information directories on CD-ROM; Computer software, in particular for searching for, retrieving and comparing information and materials.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

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 hardware includes as a broad category the opponent’s goods computers. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

The contested measuring, signalling, checking (supervision) and teaching apparatus and instruments (included in class 9) are identically included in the opponent’s list of goods.

The contested sound and image carriers and optoelectronic directories, in particular information directories on CD-ROM are highly similar to the opponent’s magnetic data carriers, except for magnetic loyalty cards and for computer programs; recording discs as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested apparatus for receiving, recording, transmission, processing or reproduction of sound, images or data are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images, except for apparatus for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not or displaying commercial information. The goods are identical.

The contested machine-readable data recording carrier are included in the opponent’s broad category recording discs. The goods are identical.

The contested data processing equipment and computers include as a broad category the opponent’s computers. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

The contested computer software, in particular for searching for, retrieving and comparing information and materials is highly similar to the opponent’s data processing equipment and computers, except for equipment and computers for issuing or displaying purchase vouchers or special offer vouchers, whether deferred or not; fire-extinguishing apparatus as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

2. The signs

BOOMERANG	boomerango
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both marks are word marks. In the case of word marks it is the word as such which is protected and not its written form. Therefore it is irrelevant if the mark is written in small or capital letters.

Visually, the signs are similar to the extent that they coincide in the sequence of the letters ‘BOOMERANG-’. The signs differ in the additional last letter ‘-o’ of the contested mark.

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 ‛boomerang-’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the additional letter ‛-o’ of the contested mark.

Conceptually, the public in the relevant territory will associate the word ‘BOOMERANG’ with a curved piece of hard wood typically from Australia which is made in such a way that when thrown it returns to its starting point. The term is also used to describe something that comes around again. The contested mark ‘BOOMERANGO’ will be perceived as a misspelling of the English word ‘boomerang’.

Therefore, the relevant public will perceive the signs as conceptually identical.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 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.

5. 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 and similar are directed at the public at large whose level of attention may be enhanced due to the specificity and price of some of the goods.

The goods are also directed at specialised public with professional knowledge or expertise in the technology and computer hardware and software field. Considering the fact that these professionals deal with software applications regularly their level of attention at the moment of choosing the goods is not necessarily enhanced. Therefore, it is deemed that the degree of attention paid by the specialised public in relation to the goods at issue is on the whole average.

6. Global assessment, other arguments and conclusion

The goods are identical and similar to various degrees.

The signs under comparison are highly similar on visual and aural levels on account of the shared element ‘BOOMERANG-’. In fact, the earlier mark is fully reproduced in the contested sign. The only difference results from the additional letter ‘o’ at the end of the contested sign. This difference, is not sufficient to counteract the obvious similarity residing in the sequence of the nine letters word ‘boomerang‘, which is instantly recognisable to most consumers. In addition, the signs are conceptually identical.

The visual and aural differences limited to the letter ‘o’ do not enable the average consumer, who only rarely has the chance to make a direct comparison between the different signs, to safely distinguish the marks in the context of identical or similar goods. The same applies even where the relevant public has an enhanced degree of attention in relation to some of the goods and services in question. In addition, consumers tend to remember similarities rather than dissimilarities between signs.

Considering all the above, and especially bearing in mind the lack of differentiating elements in the signs, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 444 059. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier community trade mark registration No 444 059 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Robert MULAC

Janja FELC

Rhys MORGAN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.