OPPOSITION No B 2 428 327

Geco Aktiengesellschaft, Schellerdamm 16, 21079 Hamburg, Germany (opponent), represented by Kramer & Partner, Mönckebergstr. 10 / Spitalerstr. 9, 20095 Hamburg, Germany (professional representative)

a g a i n s t

IFP Énergies nouvelles, 1 & 4 avenue de Bois Préau, 92852 Rueil-Malmaison Cedex, France (applicant), represented by IFP Énergies nouvelles, Nicolas Schmitt, 1 et 4 avenue de Bois Préau, 92852 Rueil-Malmaison Cedex, France (employee representative).

On 07/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 428 327 is upheld for all the contested goods and services, namely

Class 9: Magnetic recording carriers, Software (recorded); Applications for mobile telephones, used in connection with driving.

Class 42: Design and development of computer hardware and software and applications for mobile telephones; Research and development for others; Technical project studies; Design of computer systems, in particular applications for mobile telephones, used in connection with driving.

2. Community trade mark application No 12 911 418 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 911 418, namely against some of the goods and services in Classes 9 and 42. The opposition is based on Community trade mark registration No 11 158 227. 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.

1. The goods and services

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

Class 9: Computers; Computer hardware; Computer software, in particular for testing skills and ability (included in class 9).

Class 35: Compilation and systemisation of information into computer databases; Arranging IT and engineering consultancy; System integrators, namely purchasing software and/or hardware products from other manufacturers; Technology integrators, namely purchasing technology from others (hardware and/or software).

Class 37: System integrators, namely adapting, expanding and integrating hardware products from other manufacturers; Technology integrators, namely adapting, expanding and integrating technology from others (hardware).

Class 42: Systems and technology integration and information technology services; Development of new technology for others and Technological consultancy; EDP consultancy; System administration, user support for LANs and WANs; Organising and providing information and expertise in the field of electronic data processing; Computer programming; Computer consultancy; Computer system analysis; Updating, Appearance, Rental and maintenance of computer software, In particular for testing skills and ability; System integrators, namely adapting, expanding and integrating software products from other manufacturers; System integrators, namely rental of software and/or hardware products from other manufacturers; Technology integrators, namely adapting, expanding and integrating technology from others (software); Technology integrators, namely rental of technology from others (hardware and/or software).

The contested goods and services are the following:

Class 9: Magnetic recording carriers, Software (recorded); Applications for mobile telephones, used in connection with driving.

Class 42: Design and development of computer hardware and software and applications for mobile telephones; Research and development for others; Technical project studies; Design of computer systems, in particular applications for mobile telephones, used in connection with driving.

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 and opponent’s lists of goods and services, indicates that the specific goods and services 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’).

However, the term ‘namely’, used in the opponent’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 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 software (recorded) includes, as a broader category, the opponent’s computer software, in particular for testing skills and ability. 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.

Regarding the contested applications for mobile telephones, used in connection with driving the Office considers that applications are “programs or pieces of software designed to perform a function in order to meet a specific user requirement” (online Oxford English Dictionary). Therefore, these goods have the same nature as the opponent’s computer software, in particular for testing skills and ability. Moreover, they have the same method of use, they can be provided by the same producers, they are sold through the same distribution channels and the relevant public coincides for these goods. Therefore, they are considered highly similar

The contested magnetic recording carriers are storage devices whose sides are coated with a magnetic material which is magnetized while the medium is being recorded. These goods are available in several formats (e.g hard drives, tapes or memory card). It follows that they are complementary goods to the opponent’s computers as computers can be very important for the use of magnetic recording carriers in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking. Moreover, they will be distributed through the same distribution channels, can be provided by the same producers and the relevant public coincides for these goods. Therefore, they must be considered as highly similar.

Contested services in Class 42

The contested development for others includes, as a broader category, the opponent’s development of new technology for others. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested research for others is similar to the opponent’s development of new technologies for others. Indeed, these services share the same nature, they can be provided by the same producers and they target the same end users.

The contested technical project studies are included in the broad category of the opponent’s technological consultancy. Therefore, they are considered identical.

The contested design and development of computer software are included in the broad category of the opponent’s computer programming. Therefore, they are considered identical.

The contested design and development of computer hardware are similar to the opponent’s computer programming. Indeed, these two services can be provided by the same producers, through the same distribution channels and target the same end users.

The contested design of computer systems both covers the design of software and the design of hardware. Therefore, there is an overlap with the opponent’s computer programming and they must be considered as identical.

The contested design and development of applications for mobile telephones have the same nature, a similar purpose and can be provided by the same producers as the opponent’s computer programming. Therefore, they are highly similar.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in their verbal elements “GECO”. However, they differ in their figurative elements, a lizard in the earlier mark and the stylisation of a car alluding to a road sign in the contested sign, as well as the use of different colours, namely black and red in the earlier mark and blue, green and white in the contested sign. Moreover, in the earlier mark, the verbal element is placed at the centre of the sign with the figurative element on top of it whereas in the contested sign, both verbal and figurative elements are aligned on the same line with the figurative element on the left side and the verbal element on the right side. Furthermore, the letter “o” is stylised in the contested sign whereas it is not in the earlier mark and only the letters “e”, “c” and “o” are written in bold letters in the contested sign while in the earlier sign they are all written in bold letters.

Aurally, parts of the relevant territory will pronounce the signs identically as “GECO”. However, because of the stylisation of the letters “G”, “E”, “C” and “O” in the contested sign, a part of the public might pronounce the contested sign as “G”-“ECO”. Therefore, for this other part of the public, the signs will be aurally similar.

Conceptually, the figurative element of the earlier mark will be understood throughout the entire territory as a lizard. The verbal element of the earlier mark will be understood by a part of the relevant public as referring to ‘a gecko’, which is a “house-lizard found in the warmer regions of both hemispheres, remarkable for its peculiar cry, and for its power of climbing walls” (online Oxford English Dictionary). The Italian speaking public especially will do so as “geco” is the Italian word for “gecko”. Moreover the English speaking, German speaking and French speaking parts of the public will understand the meaning of “GECO” since it is very similar to the word “gecko” used in their respective languages. Furthermore this public will therefore also assume that the lizard is a representation of the gecko. However the other part of the relevant public will see no meaning in the verbal element of the earlier mark.

The figurative element representing a car of the contested sign will be understood as such throughout the entire territory. The verbal element of the earlier mark will be understood by a part of the relevant public as described above, namely as referring to ‘a gecko’, and likewise, another part of the relevant public will see no meaning. However, given that another part of the public will split the verbal element in to “G” and “ECO” they may perceive the idea of ecological.

Therefore, for part of the relevant public the signs will be conceptually similar (those who perceive the idea of a gecko and lizard in the earlier mark and those who perceive a gecko and car in the contested sign) and, for another part of the relevant public the signs will be dissimilar (for example those who perceive the idea of a lizard in the earlier mark and those who perceive a car in the contested sign)..

Taking into account the abovementioned visual similarity and, at least for part of the relevant public, aural identity and conceptual similarity, 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 earlier mark has no element that could be clearly considered more distinctive than other elements. Likewise, the contested sign has no element that could be clearly 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. Indeed, as regard to the earlier sign, the verbal element is very eye-catching because it is written in large black block letters but so is the figurative element which is coloured in red. As regard to the contested sign, both verbal and figurative elements are positioned on the same line and while the figurative element is very colourful, the verbal element is also very eye-catching because of the stylisation of the letters “e”, “c” and “o”.

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 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. 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 similar to various degrees are directed at the public at large while the services found to be identical or similar are directed at professionals. The services at issue are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention may therefore vary from average for the goods at issue to high for the services at issue.

6. Global assessment, other arguments and conclusion

The contested goods and services have been found to be partly identical, partly highly similar and partly similar to the abovementioned opponent’s goods and services.

Notwithstanding the fact that visually the signs differ in their figurative elements, they have been found visually similar to the extent that they coincide in their verbal elements “GECO” even though the stylisation and colours used for the verbal elements differ slightly. Moreover, it must be assessed that this shared element has a normal degree of distinctiveness.

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 will most readily refer to the signs by their verbal elements rather than by describing the figurative elements of the marks. Therefore, the differences stemming from the figurative elements and stylisation of the letters do not outweigh the similarities between the signs.

Moreover, the signs have been found aurally and conceptually similar for at least part of the relevant public.

Consequently, the public could believe that the goods come from the same undertaking or from an economically linked undertaking.

Taking into account 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 he or she has kept in mind, the Opposition Division is of the opinion that the above analysed similarities between the marks are enough to lead to a likelihood of confusion.

Thus, the Opposition Division finds that the differences between the marks, as described in section b) of the decision, are not enough to outbalance the similarities between them and to safely exclude the likelihood of confusion on behalf of the public. In particular, given the complete reproduction of the verbal element of the earlier mark in the contested sign and, for part of the relevant public, the aural identity and conceptual similarity, consumers may believe that the marks designate two different lines of products originating from the same company or from economically-linked undertakings.

As the goods and services are either identical or similar to various degrees a likelihood of confusion exists for a part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 11 158 227. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Ric WASLEY

Gailė SAKALAITĖ

Tobias KLEE

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.