OPPOSITION No B 2 297 367
Efacec Serviços Corporativos, S.A., Lugar da Arroteia Freguesia de Custóias, Leça do Balio e Guifões, 4465-587 Leça do Balio, Portugal (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
HCL Technologies Ltd., A-11 Sector-16, Up Noida 201301, India (applicant), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative).
On 15/09/2016, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the services of European
Union trade mark application No
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.
The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Data processing equipment and computers; computer e-commerce software solutions to allow users to perform electronic business transactions via a global computer network; computer software.
Class 35: Advertising; business management; business administration; office functions including management of computer files; professional business consultancy, including interoperable webplataform for electronic commerce; presentation of data concerning goods and services, of suppliers' information and of orders on-line, enabling users to view these information and conduct online negotiation; compilation and systematization of information into computer databases; computerized file management; data search in computer files for others; business research and marketing studies; organization of exhibitions and trade fairs for commercial or advertising purposes.
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; computer consulting services in the field of design, implementation and use of computer e-commerce software systems and web platforms for others; providing web solutions and computer e-commerce software to allow users to perform electronic business transactions in the field of ecommerce.
The contested services are the following:
Class 42: Computer services, namely, remote and on-site management of the information technology (IT) systems; consulting in the field of information technology; planning, design and management of information technology systems.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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 services in Class 42
The contested consulting in the field of information technology includes, as a broader category the opponent’s computer consulting services in the field of design, implementation and use of computer e-commerce software systems and web platforms for others. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested planning … of information technology systems is included in the broad category of, or overlaps with, the opponent’s design and development of computer hardware and software in Class 42. This is because any design or development services naturally entail some planning activities. Therefore, they are considered identical.
The contested design … of information technology systems is included in the broad category of the opponent’s design … of computer hardware and software in Class 42. Therefore, they are identical.
The contested computer services, namely, remote and on-site management of the information technology (IT) systems are similar to the opponent’s design and development of computer hardware and software in Class 42 as they can coincide in provider, relevant consumer and distribution channels.
The contested management of information technology systems is similar to the opponent’s design and development of computer hardware and software in Class 42 as they can coincide in provider, relevant consumer and distribution channels.
The applicant argues that the opponent’s goods and services are specialized in the field of e-commerce and claims that the goods and services in dispute are similar only to a low degree, at most. The Opposition Division cannot agree with this assertion because not all the opponent’s goods and services are limited to the area of e-commerce. The earlier trade mark is protected, among others, for the broad category of design and development of computer hardware and software appearing in the opponent’s list of goods and services in Class 42. Furthermore, regarding the opponent’s specialized services computer consulting services in the field of design, implementation and use of computer e-commerce software systems and web platforms for others, these are included in the applicant’s broad category consulting in the field of information technology and must, therefore, be considered identical and not only similar to a low degree. Consequently, the applicant’s arguments must be dismissed.
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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high. It will be high for the services which have a complex IT nature or which are expensive or are purchased only rarely.
Earlier trade mark
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for which the phrase ‘Strategic Sourcing Tools’ is weak.
The earlier mark is a figurative mark in black and white. It is composed of the stylised word element ‘efasst’, a horizontal line and the phrase ‘Strategic Sourcing Tools’ beneath it.
The contested sign is a figurative mark consisting of the stylised word element ‘EFaaS’ and a set of colourful rectangles. The mark is depicted in blue, green, red, black, orange and white.
The element ‘Strategic Sourcing Tools’ of the earlier sign will be associated by the English-speaking public with the nature, kind or purpose of use of the relevant opponent’s services. Bearing in mind that the relevant services are design and development of computer hardware and software and computer consulting services in the field of design, implementation and use of computer e-commerce software systems and web platforms for others, this element is considered weak for them because the services can relate to IT ‘tools’ which can be used for ‘sourcing’ and which can be ‘strategic’ for the consumer.
The horizontal line in the earlier trade mark is a basic figurative element of a purely decorative nature. Therefore, it is considered to be weak.
The element ‘efasst’ in the earlier sign is the dominant element as it is the most eye-catching.
The contested mark has no element that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the string of letters ‘EFA*S*’ contained in the word elements ‘efasst’ and ‘EFaaS’, respectively. These word elements have a similar length (six vs. five letters). The element ‘efasst’ is the most distinctive and dominant element of the earlier trade mark and the element ‘EFaaS’ is the only word element, and one of the distinctive elements, of the contested sign.
On the other hand, the signs differ in the additional letters ‘s’ and ‘t’ in the earlier trade mark and the additional letter ‘a’ in the contested sign. The marks also differ in the stylisation of the letters and the use of upper case and lower case characters. There is a further difference in the set of colourful rectangles in the contested sign that have no counterpart in the earlier mark. Furthermore, the marks also differ in the horizontal line and the phrase ‘Strategic Sourcing Tools’ of the earlier trade mark which are however weak.
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).
Therefore, the signs are visually similar to an average degree.
Aurally, the word elements ‘efasst’ and ‘EFaaS’ will most likely be pronounced as a word and not spelled out letter by letter. The pronunciation of these elements by the English speakers will be the same with the only exception of the additional sound of the letter ‛T’ of the earlier sign which has no counterpart in the contested mark.
The element ‘Strategic Sourcing Tools’ of the earlier trade mark is weak and is visually overshadowed by the much bigger element ‘efasst’. Consequently, the element ‘Strategic Sourcing Tools’ will most probably not be pronounced when referring to the earlier trade mark aurally.
Therefore, the signs are aurally highly similar.
Conceptually, while the English-speaking public in the relevant territory will understand the meaning of the weak element ‘Strategic Sourcing Tools’ in the earlier sign, the other sign lacks any meaning for that public. 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.
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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.
Global assessment, other arguments and conclusion
The services are partially identical and partially similar. The degree of distinctiveness of the earlier trade mark is average and the degree of attention of the public will be between average and high.
The overall impressions created by the marks are similar because the signs have significant visual and aural similarities in the word elements ‘efasst’ and ‘EFaaS’. The element ‘efasst’ is the most distinctive and dominant element of the earlier trade mark and the element ‘EFaaS’ is the only word element, and one of the distinctive elements, of the contested sign. Furthermore, as mentioned above in section c), the verbal components of a sign usually have a stronger impact on the consumer than the figurative components. In these circumstances, the differences between the marks (especially the different stylisation of the word elements and the colourful rectangles in the contested sign) are not sufficient to outweigh the prevailing similarities.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 10 490 589. It follows that the contested trade mark must be rejected for all the contested services.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.