OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 410 705
Soft, S.L., Manuel Silvela 15, 5º, 28010 Madrid, Spain (opponent), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena, 4, 28006 Madrid, Spain (professional representative)
a g a i n s t
Software AG USA, Inc., 11700 Plaza America Drive, Suite 700, Reston, Virginia 20190, United States of America (applicant), represented by Stephan Kropf, Hindenburgstr. 59, 66119 Saarbrücken, Germany (professional representative).
On 27/01/2016, the Opposition Division takes the following
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods and services of
Community trade mark application No
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 Spanish trade mark registration No 3 014 814.
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier Spanish trade mark No 3 014 814 was registered more than five years prior to the publication of the contested application.
The contested application was published on 27/06/2014. The opponent was therefore required to prove that the Spanish trade mark No 3 014 814, on which the opposition is based, was put to genuine use in Spain from 27/06/2009 to 26/06/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 9: Computer apparatus and equipment; registered computer programs; computers; hard disks for computers; data processing equipment (data process).
Class 42: Services of design and programming for computers, services rendered by persons, both individual or collectively, involving a high degree of mental activity and be related to theoretical or practical items regarding complex matters of the human effort, specially with regard to the computer area.
According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 23/04/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 28/06/2015 to submit evidence of use of the earlier trade mark. On 18/06/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
A copy of some pages from the ‘Presto Manual 2015’ in English.
Copies of pages of the document entitled ‘Presto Cost management for construction’, dated February 2013. It contains explanation concerning the ‘PRESTO’ programme described as ‘a very specific type of software, dedicated to cost management in a construction project’.
Copy of the price lists, dated during 2009-2014.
Copies of pages from various publications displaying information about ‘PRESTO’. They are dated 2009-2010 and contain some references to ‘Presto’ software.
Pictures of compact discs with ‘Presto’ displayed on them. The opponent explains that they contain computer programs.
Copies of numerous invoices, dated between 06/07/2009-09/06/2014 with addressees in Spain and Chile. They contain references corresponding to those from the price lists. The invoices are in Spanish and the amounts appearing on them are in EUR. The sign ‘ ’ is displayed on them.
The applicant argues that not all the items of evidence indicate genuine use in terms of extent and nature and use of the goods and services for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The evidence shows that the place of use is Spain. This can be inferred from the language of the evidence (Spanish), the currency mentioned (euro) and some addresses of the clients in Spain purchasing the goods and services of the opponent. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The document entitled ‘Presto Cost management for construction’ contains a detailed description of the goods for which the mark is used, namely ‘a very specific type of software, dedicated to cost management in a construction project’. Diverse publications display the mark ‘Presto’ for software. Pictures of compact discs are dated in different years and the mark is displayed on them. Some explanation is written in English on certain discs, such as ‘Cost management for construction’ or ‘Technical and commercial information about Presto and other Soft services’. The price lists refer to ‘programas’, ‘servicio de actualización’ and ‘Presto’. The invoices contain references from the price lists and references to ‘servicio de actualización’ and ‘Presto’. Therefore, it is clear that they refer to software and software updating which is a form of maintenance. The Opposition Division considers that these pieces of evidence, taken as a whole and considered in combination with each other, provide sufficient indications concerning the scope, nature, period and place of use.
In the context of Rule 22(3) CTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) CTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) CTMR, the following shall also constitute use within the meaning of paragraph 1: use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) CTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the earlier sign appears as a word mark ‘PRESTO’ or in figurative forms, such as: ‘ ’, ‘ ’. The colours and minor changes of the figurative element do not substantially change the distinctive character of the mark as registered. The main distinctive elements, namely the entire verbal element and the main outlines of the figurative element are reproduced. Although sometimes certain small details of the figurative element are omitted or other small or less relevant elements are added, they do not have a significant impact on the perception of the sign and may even pass unnoticed. Likewise, the colours are not the main contributors to the overall distinctiveness of the mark.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) CTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 11/03/2003, C‑40/01, ‘Ansul’ and judgment of 12/03/2003, T‑174/01, ‘Silk Cocoon’).
Taking into account the evidence in its entirety, although the evidence mentioned above is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.
According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the above-mentioned provision the following should be considered:
‘…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’
(Judgment of 14/07/2005, T‑126/03 ‘ALADIN’).
In the present case, the evidence proves use for registered computer programs related to financial matters in Class 9. These goods can be considered to form an objective subcategory of registered computer programs in Class 9. The evidence also proves use for maintenance and updating of registered computer programs related to financial matters, which can be considered to form an objective subcategory of services of design and programming for computers in Class 42. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:
Class 9: Registered computer programs related to financial matters.
Class 42: Maintenance and updating of registered computer programs related to financial matters.
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 goods and services
The goods on which the opposition is based are the following:
Class 9: Registered computer programs related to financial matters.
Class 42: Maintenance and updating of registered computer programs related to financial matters.
The contested goods and services are the following:
Class 9: Computer software; downloadable computer software, in particular for creating visualizations, mashups and / or apps by means of obtaining data from one or more data sources; computer software for creating searchable databases of information and data; computer software analyzing market information; computer software to enhance the audio-visiual capabilities of multimedia applications; computer software for access to context, computer software for websites and portals.
Class 38: Internet portal services; Access to context, websites and portals.
Class 42: Design and development of Computer programs; Providing temporary use of online non-downloadable computer software used to allow enterprise users to easily access, integrate, and format disparate online services and data by automatically combining complementary elements from two or more sources; Platform as a service (PaaS); constructing an internet platform for electronic commerce.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the applicant’s list of goods in Class 9, 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’).
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 computer software includes, as a broader category, the opponent’s registered computer programs related to financial matters. 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 to the opponent’s goods.
The contested downloadable computer software, in particular for creating visualizations, mashups and / or apps by means of obtaining data from one or more data sources overlaps with the opponent’s registered computer programs related to financial matters, because they cannot be clearly separated. Therefore, they are considered identical.
The contested computer software for creating searchable databases of information and data; computer software analyzing market information; computer software to enhance the audio-visiual capabilities of multimedia applications; computer software for access to context, computer software for websites and portals are similar to the opponent’s registered computer programs related to financial matters. The development of these types of software may require the same expertise as they can have the same field of application. Consequently, the relevant public and distribution channels can coincide.
Contested services in Class 38
The contested internet portal services; access to context, websites and portals are similar to the opponent’s maintenance and updating of registered computer programs related to financial matters in Class 42 as they can coincide in providers, distribution channels and the relevant public.
Contested services in Class 42
The contested design and development of computer programs are similar to the opponent’s maintenance and updating of registered computer programs related to financial matters as they can coincide in their providers, distribution channels and the relevant public.
The contested providing temporary use of online non-downloadable computer software used to allow enterprise users to easily access, integrate, and format disparate online services and data by automatically combining complementary elements from two or more sources; platform as a service (PaaS); constructing an internet platform for electronic commerce are similar to the opponent’s maintenance and updating of registered computer programs related to financial matters. All these services are provided by specialists in the IT sector and, therefore, may be provided by the same undertakings and through the same distribution channels. They can also target the same public.
Earlier trade mark
The relevant territory is Spain.
In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is written in upper or lower case letters.
Visually, the signs are similar to the extent that they coincide in the word ‘Presto’. However, they differ in the figurative element and graphical representation of the letters in the earlier mark.
Aurally, the pronunciation of the signs is identical.
Conceptually, ‘PRESTO’ is a Spanish adjective meaning ‘prompt’, ‘ready’ or a Spanish adverb meaning ‘immediately’, ‘promptly’. However, ‘PRESTO’ is not very commonly used to express the above as other words, such as ‘rápido’, are usually used instead. It may also be read as the first person singular form of the Spanish verb ‘prestar’ which means ‘to borrow’. As both signs contain the word ‘PRESTO’ and the figurative element of the earlier mark does not represent any clear concept, the signs are conceptually identical.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
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 word ‘PRESTO’, present on both signs, is a Spanish adjective meaning ‘prompt’, ‘ready’, or a Spanish adverb meaning ‘immediately’, ‘promptly’. However, this is not a very commonly used term in Spanish to describe something ‘prompt’ or ‘ready’. Therefore, although not particularly strong, this element nevertheless possesses a sufficient degree of distinctiveness. The figurative element of the earlier mark is not particularly strong either, as it will be perceived as an element performing an essentially ornamental function. Consequently, the marks under comparison have no elements which could be considered 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.
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, the distinctiveness of the earlier mark is not particularly strong.
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 and services found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price and degree of sophistication of products and services.
Global assessment, other arguments and conclusion
The contested goods and services are partially identical, partially similar to the opponent’s goods and services.
The marks are visually, aurally and conceptually similar to the extent that they coincide in the element ‘PRESTO’, which forms the entire contested sign and is the only verbal element of the earlier mark.
The fact that the word ‘PRESTO’ is not particularly distinctive does not in itself preclude the possibility of confusion between the marks as it is only one of a number of elements considered in the assessment of likelihood of confusion.
The remaining differences between the signs lie in the figurative element and the graphical representation of the letters in the earlier mark. However, when a sign consists of both verbal and figurative components, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. Furthermore, although the letters in the earlier mark are graphically represented, they remain standard and are perfectly readable. Therefore, in the present case, the relevant public will refer to the earlier mark by its verbal element, ‘PRESTO’, which is the element likely to be remembered by the consumers even if the figurative element is the first element of the earlier mark.
Taking all the above into account, even where the relevant public has a higher degree of attention in relation to some goods and services, the additional, differing, elements of the earlier mark are not sufficient to counteract the similarities, and at least a part of the relevant public, when encountering the signs in relation to identical and similar goods and services, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
Considering all the above, the Opposition Division finds that 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 Spanish trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier Spanish trade mark registration No 3 014 814 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).
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
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.