OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 423 302


Fujitsu Technology Solutions, LDA., Edificio Colombo, Torre Oriente Av. Colégio militar, no. 37-F, 3º PISO, 1500-564 Lisbon, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)


a g a i n s t


Smartfocus (UK) Limited, Lynton House, 7-12 Tavistock Square, London WC1H 9LT, United Kingdom (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative).


On 10/02/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 423 302 is rejected in its entirety.


2. The opponent bears the costs, fixed at EUR 300.



REASONS:


The opponent filed an opposition against all the goods and services of Community trade mark application No 12 953 006. The opposition is based on Portuguese trade mark registration No 362 835. 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 on which the opposition is based are the following:


Class 9: Hardware, software, middleware, servers and scanners.


The contested goods and services are the following:


Class 9: Computer software for use in marketing, messaging, mailing and / or creating, managing communications; downloadable software in the nature of a computer program and / or mobile application.


Class 35: Data processing management; relationship marketing customer intelligence; social media marketing consultancy; research into consumer buying habits, patterns and trends; research into consumer buying motivation; media planning being media marketing and advertising strategy; marketing and advertising media analysis services; market research; advertising by mail order; compilation of direct mailing lists; compilation of mailing lists; direct mail advertising; marketing by mail; preparation of mailing lists; preparation of mailing lists for direct mail advertising services; direct marketing, database marketing; telemarketing; business statistical analysis and reporting; processing and analysis of business statistics; database management; business information services; business consulting services in the field of electronic commerce; advertising and marketing management; agency services, namely, the creation, development and dissemination of advertising and promotional materials via direct mail, newspaper, radio, television, mobile electronic devices, a global computer network and other interactive media; consulting services, namely, interception and market analysis of advertising enquiries for the businesses of others; marketing consulting; consulting and computerised database management services for the businesses of others, namely, interpretation of market data analysis and management of advertising response data; analysis of data responses and market conditions to identify customers and define prospects; preparing personalised needs analysis, metrics, reports and recommendations for advertising, marketing and retail; prospect and customer qualification, communication, cultivation, retention and management; research services and information services relating to all the aforesaid.


Class 38: Communication by computers; electronic transmission of data, messages and images via computer terminals, electronic tablets, mobile phones; broadcast of messages using digital interactive services; streaming of digital content via the Internet.


Class 41: Education, instruction, tuition and training; production and rental of educational and instructional materials; publishing services; provision of online electronic publications (non-downloadable); including all of the aforesaid services provided online from a computer network or via the internet or extranets.


Class 42: Design research; illustrating services (design); industrial and commercial design services; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; computer services, namely, designing and implementing network web sites, software applications and information technology computer network systems for others; website design services; creation, editing and updating of website content; creating and supporting computer programs and / or mobile applications to track consumer usage and preferences on websites; design of publicity and advertising materials; computer services, namely, designing and implementing banner advertisements; graphic design services; information, consultancy and advisory services, all relating to the aforesaid 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 goods in Class 9


The contested computer software for use in marketing, messaging, mailing and / or creating, managing communications; downloadable software in the nature of a computer program and / or mobile application all fall under the broad category of the earlier mark’s software. Therefore, these goods are identical.


Contested services in Class 35


The contested services in this class are either advertisement / marketing services (relationship marketing customer intelligence; social media marketing consultancy; research into consumer buying habits, patterns and trends; research into consumer buying motivation; media planning being media marketing and advertising strategy; marketing and advertising media analysis services; market research; advertising by mail order; compilation of direct mailing lists; compilation of mailing lists; direct mail advertising; marketing by mail; preparation of mailing lists; preparation of mailing lists for direct mail advertising services; direct marketing, database marketing; telemarketing; advertising and marketing management; agency services, namely, the creation, development and dissemination of advertising and promotional materials via direct mail, newspaper, radio, television, mobile electronic devices, a global computer network and other interactive media; consulting services, namely, interception and market analysis of advertising enquiries for the businesses of others; marketing consulting; consulting and computerised database management services for the businesses of others, namely, interpretation of market data analysis and management of advertising response data; analysis of data responses and market conditions to identify customers and define prospects; preparing personalised needs analysis, metrics, reports and recommendations for advertising, marketing and retail; prospect and customer qualification, communication, cultivation, retention and management; research services and information services relating to all the aforesaid) or business management / administration services (data processing management; business statistical analysis and reporting; processing and analysis of business statistics; database management; business information services; business consulting services in the field of electronic commerce; research services and information services relating to all the aforesaid).


Services of advertising and promotion (also marketing) consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring for it competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study the client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. These services are fundamentally different in nature and purpose from the goods of the earlier mark. They are not complementary or in competition. The fact that the opponent’s goods may appear in advertisements is insufficient for a finding of similarity between those goods and the services of a marketing agency. Therefore, the abovementioned contested services are dissimilar to the goods of the opponent.


The contested services related to business management and administration are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to perform their business or to provide businesses with the necessary support to develop and expand greater market share by means of the management and administration strategies or organising people and resources efficiently so as to direct activities toward common goals and objectives. As a general rule it can be said that business management services are provided in order to improve the performance of the business and business administration services are performed in order to organise and run a business. None of the goods protected by the earlier right can be found similar to the contested services mentioned above. The fields are not linked; they belong to a different area of activity, are of a different nature and have different purposes. The abovementioned contested services are considered to be dissimilar to the opponent’s goods.


Contested services in Class 38


The contested services communication by computers; electronic transmission of data, messages and images via computer terminals, electronic tablets, mobile phones; broadcast of messages using digital interactive services; streaming of digital content via the Internet are all telecommunication services, some of them specifically linked with computers. Telecommunication services are those that allow people to communicate with one another by remote means. The earlier mark is registered for, inter alia, hardware, software and servers. Those goods are commonly used for telecommunication. A link exists between these goods in Class 9 and telecommunication services in Class 38. These goods and services are similar given their complementary character, and although their nature is different their purpose and distribution channels are the same (12/11/2008, T‑242/07, Q2web, EU:T:2008:488, §  24-26).


Contested services in Class 41


The contested publishing services and provision of online electronic publications (non-downloadable); including all of the aforesaid services provided online from a computer network or via the internet or extranets are similar to the opponent’s software as these goods and services have the same purpose, they are directed at the same relevant public and may be produced / provided by the same undertakings.


The remaining contested services in this class, namely education, instruction, tuition and training; production and rental of educational and instructional materials; including all of the aforesaid services provided online from a computer network or via the internet or extranets, are all connected to education and provision of educational material. The opponent’s software may include software with any type of educational, training and instructional contents. Therefore, the opponent’s goods and these contested services may coincide in their ultimate educational purpose. Furthermore, although they differ in their nature (goods are tangible, whereas services are intangible), it must be noted that, nowadays, service providers offering educational courses often include contents and materials, in the form of software, in the teaching package to participants as learning supports. Consequently, from a consumer perspective, it is common and expectable that these educational service providers also make, use and distribute learning resources such as software. It follows that the abovementioned contested services and the opponent’s software may originate from the same producers/providers and be provided via the same distribution channels to the same end users. Therefore, these goods and services are considered to be similar.


Contested services in Class 42


An interpretation of the wording of the list of services in this class is required to determine the scope of protection of these services. The term ‘namely’, used in the applicant 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 contested computer services, namely, designing and implementing network web sites, software applications and information technology computer network systems for others; website design services; creation, editing and updating of website content; creating and supporting computer programs and / or mobile applications to track consumer usage and preferences on websites; computer services, namely, designing and implementing banner advertisements; information, consultancy and advisory services, all relating to the aforesaid services are specific types of computer programming services and services very closely related to them. These services are closely linked to hardware and software. This is because in the field of computer science producers of computers and/or software will also commonly render computer and/or software-related services (as a means of keeping the system updated, for example). Consequently and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services coincide. Furthermore, they are goods and services that are complementary. For these reasons these goods and services are considered similar.


The remaining contested services in this class, namely design research; illustrating services (design); industrial and commercial design services; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; design of publicity and advertising materials; graphic design services; information, consultancy and advisory services, all relating to the aforesaid services are services related to design and graphic design, some specifically for advertisement purposes. These services are normally provided by specialised design companies. Although software is usually used while providing such services, the design providers themselves are mere users, not developers of software. The same applies to hardware and the remaining goods of the earlier mark. Therefore, these contested services differ in nature, purpose and they are not distributed through the same channels from the opponent’s goods. The usual providers of the goods of the opponent are also different from those of the contested services. Therefore, these services are dissimilar to the goods of the earlier mark.



  1. 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 as well as professional and business consumers (some more complex software or the services in Class 42). The degree of attention will vary from average to higher depending on the complexity and price of the specific goods or services.



  1. The signs



SMARTDOCS


SmartiTrends



Earlier trade mark


Contested sign


The relevant territory is Portugal.


The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).


Both marks are word marks consisting on one word element. The earlier mark consists of the word ‘SMARTDOCS’, whereas the contested sign contains the word ‘SmartiTrends’. Since both of them are word marks, it is irrelevant whether they are registered in lower or upper case letters.


The opponent claims that the words ‘smart’ and ‘docs’ will be identified and understood by the relevant public in the earlier mark and the words ‘smart’, ‘IT’ and ‘trends’ in the contested sign. The relevant public is Portuguese and, since neither of the abovementioned words is widely used in Portugal (with a possible exception of ‘IT’ but this acronym is in the middle of the word and there is no reason why the public should extract these two letters from the middle of the word element, especially considering that the remaining parts have no meaning for them; otherwise, if they did have a meaning, then consumers would probably perceive the word ‘Trends’ instead and there would be no remaining ‘T’ left for ‘IT’) or is a basic English word, in principle, it cannot be considered that the relevant public will split the marks, identify the English words and understand their meaning.


On the other hand, it cannot be excluded that at least a part of the public, in particular when considering that the relevant goods and services are connected with information technology, a field in which English is used more often, will understand the meaning of the words ‘smart’, ‘docs’ (as an abbreviation for documents) and ‘trends’. For this part of the public, all of the words ‘smart’, ‘docs’ and ‘trends’ are weak as they describe the characteristics of the goods (smart docs – an efficient software / hardware solution for organizing documents), smart trends (efficient new ways of doing things). For the part of the public that will not understand the English terms, the marks have no elements that could be considered more or less distinctive than other elements.


Being a single component word marks, the marks do not have any element that could be considered more dominant (visually eye-catching) than other elements.


Visually, the signs coincide in their initial parts ‘smart’ and in their last letters ‘s’. Both of the marks also contain the letter ‘d’ but in different positions in both words. Despite coinciding in their initial parts, the marks show significant differences in their second parts. The second parts ‘DOCS’ versus ‘iTrends’ are, with the exception of the last letter ‘s’, very different. The marks are visually similar to a low degree.


Aurally, the earlier mark will be pronounced in two syllables ‘smart-doks’, whereas the contested sign has three syllables: ‘smar-ti-trends’. Therefore, the overall rhythm and intonation of the pronunciation of the two signs is different. Although they coincide in several letters at their beginnings and in their last letter, the differences in their second (and third, in the contested sign), syllables are considerable. Apart from the final sound of letter ‘s’, the marks’ second parts are very different – ‘ti-trends’ versus ‘docs’. Consumers will not even notice that the letter ‘d’ is present in both signs due to its different position. The differences in length (two versus three syllables), rhythm and in the second parts of the words, cause the overall pronunciation of the marks to differ significantly. Consequently, despite their coincidence in several initial letters, the marks are aurally similar to a low degree.


Conceptually, neither of the signs has a meaning for a part of 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 for this part of the public.


For the part of the public that will understand the English terms contained in the marks, as explained above, the marks would be conceptually linked through the concept of ‘smart’. This concept is, however, weak for the relevant goods and services and, thus, such a similarity does not have a significant impact on the public’s attention. Moreover, conceptually the marks differ in the remaining words ‘docs’ versus ‘trends’. Therefore, the marks are conceptually similar to a low degree for this part of the public.



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



  1. 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 part of the public in the relevant territory which will not understand the English terms ‘smart’ and ‘docs’. Therefore, the distinctiveness of the earlier mark must be seen as normal from the perspective of this part of the public.


The public which will perceive the English words ‘smart’ and ‘docs’ in the earlier mark will see the mark as lowly distinctive, as these words indicate the nature and qualities of the goods for which the mark is registered.



  1. Global assessment, other arguments and conclusion


According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §  29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).


The marks are similar to a low degree. This is evident in particular form the aural perspective, when the earlier mark consists of two syllables whereas the contested sign contains three. The second parts of the marks are very different. Despite their coincidence in the last letter and in the letter ‘D’ (placed in different positions), the final parts of the marks, ‘DOCS’ versus ‘iTrends’, cannot be mistaken one for another. Even though the marks contain identical letters ‘smart’ at their beginnings, the final parts are also substantial components of both marks and they are clearly distinguishable.


The overall impression created by both marks is not ruled by their identical beginnings; these are merely parts of the words, which are, overall, different. The coinciding initial string of letters does not form an independent element in any of the signs. Thus, the dissimilar second parts of the marks change the overall impression sufficiently so that the consumers will safely distinguish between them, even in relation to identical goods. This applies even more to the part of the public which will understand the English words contained in the marks because for this part of the public, the coinciding parts, ‘smart’, are weak, and moreover, the entire earlier mark has only a low degree of distinctiveness.


Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.


Given that the opposition is not well founded under Article 8(1) CTMR it is unnecessary to examine the evidence of use filed by the opponent.



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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.


According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.




The Opposition Division


María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Gueorgui IVANOV



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.



Latest News

  • FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
    May 28, 2021

    For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).

  • THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
    May 27, 2021

    Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.

  • UNO & UNA | DECISION 2661950
    May 22, 2021

    Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)