OPPOSITION No B 2 456 484

Setu GmbH, Oberbettringer Straße 15, 73525 Schwaebisch Gmuend, Germany (opponent), represented by Rüger, Barthelt & Abel, Webergasse 3, 73728 Esslingen, Germany (professional representative)

a g a i n s t

Swiftshift Limited, United House, North Road, London N7 9DP, United Kingdom (applicant), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative).

On 11/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 456 484 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 13 209 606, namely goods and services in Classes 9, 35, 38, 42 and 45. The opposition is based on the following earlier rights:

• Community trade mark registration No 12 930 921 ,

• Community trade mark registration No 12 833 091 ‘setu’ (word mark),

• German trade mark registration No 302 012 054 432 ‘setu’ (word mark).

The opponent invoked Article 8(1)(b) CTMR.

SUBSTANTIATION

The following refers to the substantiation of earlier German trade mark registration No 302 012 054 432 ‘setu’ (word mark).

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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) CTMIR, the Office shall 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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case, the evidence submitted by the opponent for German trade mark registration No 302 012 054 432 consists of a registration certificate accompanied by a translation. However, this evidence is not sufficient to substantiate earlier German trade mark registration No 302 012 054 432, since, according to this document, the owner of the mark (i.e. digiparden GmbH) does not coincide with the opponent of the present proceedings (i.e. setu GmbH) and no explanation of the connection between these two entities was submitted. Therefore, the document does not show the connection between the owner of the trade mark and the opponent. As a consequence, there is no proof that opponent is entitled to file the opposition based on that earlier mark.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark, and will now proceed on the basis of earlier Community trade marks No 12 833 091 and No 12 930 921.

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:

Goods and services of earlier Community trade mark No 12 930 921:

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; recorded content; devices for treatment using electricity; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; measuring, sensing and monitoring instruments, devices and regulators; navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment.

Class 38: Telecommunication services.

Class 42: Design services; it services; testing, authentication and quality control; science and technology services.

Goods and services of earlier Community trade mark No 12 833 091:

Class 9: Information technology and audiovisual equipment; recorded content; scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; devices for treatment using electricity; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment.

Class 38: Telecommunication services.

Class 42: Design services; it services; testing, authentication and quality control; science and technology services.

The contested goods and services are the following:

Class 9: Computer software; computer hardware; computer software for business management, business administration and workforce management purposes; computer equipment; parts and fittings for the aforesaid goods; none of the above relating to the provision of construction industry information.

Class 35: Business management services; business administration services; none of the above relating to the provision of construction industry information.

Class 38: Telecommunication services; computer services relating to the provision of access to computer databases and the Internet; providing access to databases and Internet sites; none of the above relating to the provision of construction industry information.

Class  42: Design and development of computer hardware and software; computer services; computer consultancy; computer research services; computer consultancy services; computer programming services; none of the above relating to the provision of construction industry information.

Class 45: Social introduction and networking services; Providing information in the field of personal development namely self improvement, self fulfillment, charitable, philanthropic, volunteer, public and community services and humanitarian activities; licencing of computer software and other technologies.

Some of the contested goods and services are identical or similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical or similar to those of the earlier mark.

2. The signs

Community trade mark registration No 12 930 921 Community trade mark registration No 12 833 091 setu
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Visually, the earlier word mark is a sequence of four letters, ‘setu’, which form a single verbal element.

The contested sign consists of a black circle containing a highly stylised white letter ‘S’. This letter contains two black arrows occupying the spaces between the curves forming it.

The coincidence between the earlier word mark, ‘setu’, and the contested sign is that the word forming the earlier mark contains a letter ‘s’, which is the letter present in the contested sign. However, the coinciding letter ‘s’ plays a totally different role in the contested sign, since it is the only letter in the mark, depicted in a highly stylised manner, with two arrows and on a black circle acting as a background.

The coinciding letter, ‘s’, is visually perceptible by consumers not as a separate element within the earlier word mark, but as one of the several letters forming it. It is therefore considered that the earlier word mark coincides with the contested sign in only irrelevant aspects, and it is therefore concluded that the signs are not visually similar.

The earlier figurative mark consists of a black circle containing two white curved lines, one above the other. Part of the public will perceive the white elements inside the circle as two numbers ‘2’, facing each other. Another part of the public could perceive them as two parts of the letter ‘S’, divided by a black line. Finally, part of the public could also perceive the white curved lines as not depicting anything in particular, but being only abstract figures. In these scenarios, the marks are visually similar, since they are both contain a black circle with a white element inside. For the part of the public perceiving the white curved lines in the earlier mark as forming a letter ‘S’ (although it is divided in two), the signs are also visually similar to this extent.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the contested sign is pronounced by spelling out the letter ‘S’. The earlier word mark is referred to aurally by pronouncing the sequence of letters ‘setu’ (i.e. two syllables ‘se/tu’). Even though the sound of the letter ‘s’ is somewhat similar when pronounced by itself and when forming part of a word, this coincidence is not particularly relevant, since the coinciding element is aurally not perceptible as a separate element in the earlier word mark. It is therefore concluded that this sign and the contested mark are not aurally similar.

The part of the public that perceives the white curved lines in the earlier figurative sign as forming the letter ‘S’ will pronounce both marks by saying the letter ‘S’. Therefore, for those consumers the earlier figurative mark and the contested sign are aurally identical.

For consumers who perceive the white curved lines in the earlier mark as numbers, the earlier mark is not aurally similar to the contested mark, since the contested mark will be pronounced as the letter ‘S’ (i.e. by spelling it out) whereas the earlier mark will be referred to aurally by pronouncing the numbers (e.g. ‘veintidós’ in Spanish or ‘twenty-two’ in English).

For the part of the public that perceives the earlier mark as a purely figurative sign, this mark is not subject to an aural assessment. Therefore, even if the contested sign is pronounced as explained above, since one of the signs is purely figurative, for this part of the public it is not possible to compare them aurally.

Conceptually, the earlier word mark ‘setu’ is meaningless for part of the public in the relevant territory (e.g. Spanish- and English-speaking consumers). However, for another part of the public the word ‘setu’ can have a concept.

For instance, for Czech consumers, when the word ‘setu’ is used within a sentence, it can convey the concept of ‘set’ (in English). In this case, since ‘setu’ is not used within a sentence, some of the Czech consumers will perceive it as meaningless, but it cannot be disregarded that some of them could attribute to it the concept referred to above.

The black circle acting as a background in the figurative marks will be perceived merely as a background conveying no particular concept.

The earlier figurative mark conveys, for the part of the public that perceives the white curved lines inside it as the letter ‘S’ or as numbers, the concept of the letter or the numbers depicted.

The contested mark is formed by the letter ‘S’ and two arrows, together with a black circle as a background. It conveys, therefore, the concepts of the letter ‘S’ and of the arrows.

According to the descriptions above, the earlier word mark and the contested sign are not conceptually similar, regardless of whether the earlier word mark is perceived as having a concept or not.

The earlier figurative mark and the contested sign are conceptually similar for the part of the public that perceives the white lines in the earlier mark as the letter ‘S’.

According to the above, there are certain coincidences in the contested sign and the earlier word mark, but these are not enough to consider them similar, and they are dissimilar overall. On the other hand, the earlier figurative mark and the contested sign are similar.

Since similarity of signs is required for Article 8(1)(b) CTMR to apply, and the coincidences found between earlier Community trade mark registration No 12 833 091 ‘setu’ and the contested sign have been considered irrelevant and not capable of leading to a finding of similarity between the signs (i.e. they are considered dissimilar overall), the analysis will now proceed based on only earlier Community trade mark registration No 12 930 921.

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 marks under comparison have no elements which could be considered clearly 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.

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 and services assumed to be identical or similar are directed at both the general public and professionals. The degree of attention paid during the purchase of the goods and services at issue varies from average to higher than average. A higher than average degree of attention is likely to occur for the goods and services that, for instance, constitute infrequent purchases (e.g. computer research services), are expensive or target professionals.

6. Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical or similar.

Earlier figurative mark No 12 930 921 is, as explained in section b) above, similar to the contested sign, in that they coincide in the black circular background and, for the part of the public that perceives the white curved lines inside the circle in the earlier mark as the letter ‘S’, the signs are also similar to the extent that the black circles contain the same letter.

For the part of the public that perceives the letter ‘S’ in the earlier figurative mark, both signs contain a single letter.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the present case, the coinciding letter, ‘S’, is highly stylised in both marks, but in totally different ways. The difference between the portrayals of the letters will therefore be easily perceived (i.e. a letter ‘S’ divided in two parts in the earlier mark versus a letter ‘S’ not divided in two but incorporating two arrows in the contested sign). In addition, the black circle they are contained in is not particularly fanciful.

Accordingly, it is considered that the differences between earlier Community trade mark No 12 930 921 and the contested sign are clearly enough to counteract their coincidences and, even assuming that the goods and services are identical or similar, consumers will be capable of distinguishing the signs. Therefore, there is no likelihood of confusion on the part of the public.

The degree of attention paid by consumers, as explained above, varies from average to higher than average, depending on the characteristics of the goods and services in question. The quite obvious differences between the marks are clearly enough to prevent any likelihood of confusion about the origin of the goods and services, regardless of the degree of attention paid by consumers.

Considering all the above, and even assuming that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, and there is no need to need to carry out a full comparison of the goods and services in section a).

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

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Begoña URIARTE VALIENTE

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.