OPPOSITION No B 2 417 106

Align Communications Inc., 55 Broad Street 6th Floor, New York 10004, United States of America (opponent), represented by Fladgate LLP, 16 Great Queen Street

London WC2B 5DG, United Kingdom (professional representative)

a g a i n s t

Tango/04 Computing Group S.L., Avenida Meridiana, 358 - 12º A-B, 08027 Barcelona, Spain (applicant), represented by Marquespatent S.L.,Tuset, 34 Principal

B-C-D, E-08006 Barcelona, Spain (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 417 106 is partially upheld, namely for the following contested goods and services:

Class 9: Data processing apparatus and instruments; Computers; Computer hardware; Computer software (recorded programs); Peripherals adapted for use with computers; Recorded computer programs and computer software.

Class 35: Sale via global computer networks of computer hardware and software.

Class 42: Computer programming services; Design, updating and maintenance of computer software; Computer software and hardware design for others, and consultation services in the field of computers; computer services, namely, designing, creating and maintaining web sites for others; Computer systems analysis, integration of computer systems and networks, computer programming for others all for use in commercial interactions over global computer networks; Technical support services, namely, troubleshooting of computer hardware and computer software problems; Interconnection of computer hardware and software; Computer software and hardware testing services; Technical project studies in the field of computer hardware and software; consultancy in the field of computer hardware, namely consultancy regarding computing research and development; Computer system analysis; Technical consultancy and advice relating to use of the internet; Rental of computers and computer software; Engineering services relating to computers.

2. European Union trade mark application No 12 899 514 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 899 514, namely against all goods and services in Classes 9 and 42 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 9 163 551. The opponent invoked Articles 8(1)(b) and 8(5) 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.

1. The goods and services

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

Class 9: Computers; computer software; business software; telecommunications apparatus (including modems) to enable connection to databases and to the Internet.

Class 37: Installations; maintenance, repair, removal and relocation of computers; installation, maintenance, repair, removal and relocation of computer networks; installation, maintenance, repair, removal and relocation of telecommunications apparatus.

Class 42: Computer software design; computer programming and development services; information relating to the aforesaid services provided on line from a computer database or from the Internet; technical support of computer networks; design and installation of computer network systems for others; consultancy and advisory services in relation to the design, development and updating of computers and the design, development, updating and maintenance of computer software; installation of computer software.

The contested goods and services are the following:

Class 9: Data processing apparatus and instruments; Computers; Computer hardware; Computer software (recorded programs); Peripherals adapted for use with computers; Recorded computer programs and computer software.

Class 35: Information in business matters, Data processing; Business and industrial management; Import, export; sale via global computer networks of computer hardware and software.

Class 42: Computer programming services; Design, updating and maintenance of computer software; Computer software and hardware design for others, and consultation services in the field of computers; computer services, namely, designing, creating and maintaining web sites for others; Computer systems analysis, integration of computer systems and networks, computer programming for others all for use in commercial interactions over global computer networks; Technical support services, namely, troubleshooting of computer hardware and computer software problems; Interconnection of computer hardware and software; Computer software and hardware testing services; Technical project studies in the field of computer hardware and software; consultancy in the field of computer hardware, namely consultancy regarding computing research and development; Computer system analysis; Technical consultancy and advice relating to use of the internet; Rental of computers and computer software; Engineering services relating to computers.

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 ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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

Computers; computer software (recorded programs); Recorded computer programs and computer software are identically contained in both lists of (including synonyms).

The contested computer hardware include, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested data processing apparatus and instruments include, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested peripherals adapted for use with computers are similar to the opponent's computers as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T-715/13, Castello, ECLI:EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. For these reasons, the contested sale via global computer networks of computer hardware and software, which are online retail services are lowly similar to the opponent's goods Computers; computer software.

However, the remaining contested services Information in business matters, Data processing; Business and industrial management; Import, export are specialised services offered by business management companies, import/export companies and are unlikely to be offered by those companies who produce computers or software, telecommunication apparatus (Class 9), the installation, maintenance, repair, removal and relocation of computers, computer networks and telecommunication apparatus (Class 37), or the computer and software services in Class 42. Not even the contested data processing is similar as this is a service similar to office functions, not provided by specialist computer or software companies. These services are directed at different consumers, are not in competition or complementary. Therefore, these services are considered to be dissimilar.

Contested services in Class 42

Computer programming services; Design of computer software; computer software design for others are identically contained in both lists of (including synonyms).

The contested updating and maintenance of computer software overlap with the opponent's installation of computer software. The services are therefore identical.

The contested technical support services, namely, troubleshooting of computer hardware and computer software problems overlap with the opponent's technical support of computer networks and are therefore identical.

The contested consultation services in the field of computers are identical to the opponent's consultancy and advisory services in relation to the design, development and updating of computers, despite using a slightly different wording.

The contested computer services, namely, designing, creating and maintaining web sites for others; computer programming for others all for use in commercial interactions over global computer networks are included in the broad category of the opponent's computer programming and development services and are therefore identical.

The contested consultancy in the field of computer hardware, namely consultancy regarding computing research and development overlap with the opponent's consultancy and advisory services in relation to the design, development and updating of computers and are therefore identical.

The contested computer software testing services are included in the broad category of the opponent's computer programming and development services and are therefore identical.

The contested computer systems analysis (enumerated twice); Technical project studies in the field of computer hardware and software; Technical consultancy and advice relating to use of the internet are all included in, or overlap with, the broad category of the opponent's consultancy and advisory services in relation to the design, development and updating of computers and the design, development, updating and maintenance of computer software and are therefore identical.

The contested integration of computer systems and networks; Interconnection of computer hardware and software are included in, or overlap with, the broad category of the opponent's design and installation of computer network systems for others and are therefore identical.

The contested engineering services relating to computers overlap with the opponent's consultancy and advisory services in relation to the design, development and updating of computers and are therefore considered to be identical.

The contested computer hardware design for others; computer hardware testing services are similar to the opponent's consultancy and advisory services in relation to the design, development and updating of computers as they may be provided by the same companies in combination with the opponent’s services as also their purpose can coincide. Moreover they may be directed at the same public via the same distribution channels.

As regards the contested rental of computers these services are similar to a low degree to the opponent’s Computers in Class 9. This is because in the IT field manufacturers of computers may also rent them or provide similar services around those goods (e.g. leasing). Although the natures of the goods and services are not the same, the usual producers/providers of the goods and services and their end users coincide.

The contested rental of computer software is also similar to a low degree to the opponent’s Computer software in Class 9. This is because in the computer software market it is very common that it is rented by licenses. Therefore, although the nature of the goods is different, the usual producers/providers of the goods and services and their end users coincide.

2. 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 at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price (for example high degree of attention in relation to computer programming, technical project studies in the field of computer hardware and software, etc.).

3. The signs

ALIGN
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 word 'ALIGN' of the earlier mark and 'ALIGNIA' of the contested mark are not meaningful in certain territories of the European Union. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public where the mentioned words are not understood (i.e. German-speaking part of the public).

The earlier mark is a word mark. 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.

The contested mark is a figurative mark composed of the word 'alignia' in lowercase typeface. Above the letters 'a' and 'i', a depiction of a dot appears. Also, there is a thin, almost invisible horizontal line, placed above the letters ‘gn’ of the contested mark. These elements are considered to be of a purely decorative nature. Therefore, the word ‘ALIGNIA’ is considered the most distinctive element of the contested sign.

The words ‘ALIGN’ of the earlier mark and 'ALIGNIA' of the contested mark have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘ALIGN’. However, they differ in the stylisation of the letters of the contested mark such as the font and dots and in the additional letters 'IA' placed at the end of the contested mark. The earlier mark is therefore entirely included in the beginning of the contested sign’s most distinctive element.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Therefore, the signs are similar to at least an average degree.

Aurally, irrespective of different pronunciation rules in different part of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ALIGN’, present in both signs. The pronunciation only differs in the sound of a diphthong ‛-ia’ placed at the end of the contested mark.

Therefore, the signs are aurally similar to an average or for a part of the public even a high degree.

Conceptually, neither of the signs has a meaning or concept for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.

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 and 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

The contested goods and services are partly identical and partly similar to different degrees and partially dissimilar. The signs are visually and aurally similar to at least an average degree while the conceptual comparison has no impact in the overall similarity of the signs as they have no meaning. While the differences between the signs are not imperceptible, they are not sufficient to rule out any likelihood of confusion, and more specifically the likelihood of association, on the part of the relevant public who, although aware of differences between the signs, nevertheless assumes that owing to their similarities they derive from the same undertaking or an economically linked undertaking.

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).

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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and service found to be identical or similar to those of the earlier trade mark and even for the services found to be similar only to a low degree, as the marks were found to be similar to an average degree in more than one aspect, and the earlier mark is fully included in the contested mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 23/10/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/02/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabian GARCIA QUINTO

Janja FELC

Judit NÉMETH

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.