OPPOSITION No B 2 475 716

Unify GmbH & Co. KG, Hofmannstr 63, 81379 Munich, Germany (opponent), represented by Vossius & Partner, Patentanwälte Rechtsanwälte MBB, Siebertstr. 3, 81675 Munich, Germany (professional representative)

a g a i n s t

Telemach širokopasovne komunikacije d.o.o., Cesta Ljubljanske brigade 21, 1000 Ljubljana, Slovenia (applicant).

On 29/01/2016 , the Opposition Division takes the following

DECISION:

1. Opposition No B 2 475 716 is upheld for all the contested services.

2. Community trade mark application No 13 312 806 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 13 312 806. The opposition is based on Community trade mark registration No 9 911 851. 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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; optical electrotechnical and electronic apparatus and equipment for storing, recording, sending, transmission, receiving, reproduction and processing of sounds, signals, symbols and/or images, and for the integration of voice, image, text, data, multimedia and moving image communications on networks; apparatus for recording, processing, sending, transmission, relaying, storage and output of messages, information and data; communications computers, software; optical, electrotechnical and electronic apparatus for voice, image, text; data, multimedia and moving image communications devices, in particular for voice data communications, telephones, videophones, and telephone answering machines, dialling apparatus, domestic telephone apparatus, telephone branch exchanges; photocopying apparatus; telecommunications network equipment, including exchange and transmission apparatus, individual modules and components for this apparatus, including power supply apparatus; batteries, accumulators, power supply (transformers), transmission devices, including communications cables and optical fibres and associated connectors; apparatus for wireless transmission by means of infrared or radio; parts of all the aforesaid apparatus and equipment (included in class 9); installations consisting of a combination of the aforesaid apparatus and equipment.

Class 35: Advertising: business management; business administration; office functions; telephone answering for unavailable subscribers.

Class 37: Building construction; repair; installation services; repair of electrical apparatus for recording, sending, transmission, receiving, reproduction and processing of sounds, signals, symbols and/or images, and for the integration of voice, image, text, data, multimedia and moving image communications on networks, apparatus for recording, processing, sending, transmission, relaying, storage and output of messages, information and data, communications computers, optical, electrotechnical and electronic apparatus for voice, image, text, data, multimedia and moving image communications devices, in particular for voice data communications, telephones, videophones, and telephone answering machines, dialling apparatus, domestic telephone apparatus, telephone branch exchanges photocopiers, telecommunications networks, comprising exchange and transmission apparatus, individual modules and components for this apparatus, including power supply apparatus, batteries, accumulators, power supply (transformers), transmission devices, including communications cables and optical fibres and associated connectors, apparatus for wireless transmission by means of infrared and radio, parts of all the aforesaid apparatus and equipment, installations consisting of a combination of the aforesaid apparatus and equipment.

Class 38: Telecommunications; telecommunications services for the operation of equipment for telecommunications, in particular telecommunications by means of company and carrier networks (voice, data and mobile radiotelephone networks) for the electronic transmission of data, images, sound and documents via computer terminals, electronic mailing (e-mail services), facsimile transmission, short messaging services (sms), call relaying services (teleconference services); renting of telecommunication appliances and devices and of telecommunication networks.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Technical consultancy in the setting up and operation of telecommunications installations and telecommunications networks; development, planning and design of telecommunications and information processing services and equipment, equipment for the electronic storage and retrieval of data and telecommunications networks, and equipment and parts therefore; development, generation and renting of data processing programs; repair of computer software.

The contested services are the following:

Class 35: Commercial trading and consumer information services; Advertising, marketing and promotional services; Business assistance, management and administrative services; Business analysis, research and information services; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics.

Class 38: Telecommunication services.

Class 42: Design services; IT services; Science and technology 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.

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 elements ‘in particular’ and ‘including’, used in the opponent’s list of goods and services in classes 9, 37 and 38 indicate 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’, EU:T:2003:107).

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.

Contested services in Class 35

The contested advertising, marketing and promotional services; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics are included in the opponent’s broader category of Advertising. Therefore, they are identical.

The contested business management; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics are included in the opponent’s broader category of business management. Therefore, they are identical.

The contested Business assistance services; Business analysis, research and information services; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics are included in the opponent’s broader category of business management. Therefore, they are identical.

The contested Commercial trading and consumer information services; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics are similar to a high degree to the opponent’s business management. Business management services are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc. On the other hand, commercial trading is, in its broadest sense, the operating of a business for profit, although it usually refers to those activities involving buying and selling as opposed to industry. Consumer information services are services which provide information and consultation on the products sold/services provided. All these services have a similar purpose and nature as they are involved in the running and operating of businesses and may provide advice and information to enable a company to function successfully in a given market segmentt. In addition, these services are likely to be rendered in combination with each other through the same channels and providers and to the same end users. They are, therefore, considered to be highly similar.

Similar reasoning applies to the contested business administrative services; none of the aforesaid in relation to screws of metal, masonry anchors of metal, wall plugs of metal, metal washers, core drilling bits, power drill bits, printed matter, sealant compounds for joints, masonry anchors, wall plugs, cable ties, cable clips, clips made of plastics, which consist in organising people and resources efficiently to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation. The line between business administration and the opponent’s business management is blurred and it is sometimes difficult to clearly distinguish between them. They both fall under the broader category of business services. As a general rule, business administration services are performed in order to organise and run a business, whereas business management follows a higher-level approach aimed at setting common goals and deciding on the strategic plan for a commercial enterprise. Therefore, all these services have a similar purpose and can coincide in their providers and end users. Therefore, they are similar.

Contested services in Class 38

The contested telecommunication services are identically contained in both lists of services.

Contested services in Class 42

The contested design services include, as a broader category, the opponent’s design of telecommunications and information processing services and equipment, equipment for the electronic storage and retrieval of data and telecommunications networks, and equipment and parts therefore. 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.

Technology can be defined as the products, tools and processes used to accomplish tasks in daily life. Science is a systematic way of acquiring knowledge about a particular field of study. The contested science and technology services are provided by, inter alia, engineers in the fields of science, technology and industry. They are specialised in nature and are likely to be provided to businesses developing specific technologies. They cover, among other services, many related to computer software. Therefore, they may overlap with the opponent’s development, generation of data processing programs. Thus, they are considered identical.

Information technology (IT) is the application of computers and telecommunications equipment to store, retrieve, transmit and manipulate data, often in the context of a business or other enterprise. In its broadest sense, IT refers to anything related to computing technology, such as networking, hardware, software or the Internet. Thus, the contested IT services include, as a broader category, among others, the opponent’s development, generation of data processing programs. 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.

2. The signs

Unify
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Italian- and Spanish-speaking part of the relevant public.

The earlier word mark consists of the verbal element ‘Unify’. The protection of word marks comprises upper case and lower case, a mixture of the two and a variety of common fonts.

The contested sign is a figurative mark in which the verbal element ‘unifi’ is depicted in slightly stylised white lower case letters and enclosed in a pink background which may evoke a speech bubble. The elements at the bottom of the sign are only indications about the colours claimed and thus they will not be taken into account for the comparison of the signs.

Visually, the signs are similar to the extent that they coincide in the string of letters ‘unif’. However, the signs differ in the last letter, namely ‘y’ in the earlier mark and ‘i’ in the contested sign, and also in the figurative element, namely the pink background.

Aurally, the pronunciation of the signs coincides in the identical sound generated by the strings of letters ‘unify’ in the earlier mark and ‘unifi’ in the contested sign. Indeed, the letters ‘y’ and ‘i’ will be pronounced identically in the relevant territories. Therefore, the signs are aurally identical.

Conceptually, the earlier mark ‘unify’ and the only striking verbal element ‘unifi’ of the contested sign do not have any meaning for the public in the relevant territories. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, it cannot be completely overlooked that a part of the relevant public could associate the terms ‘unifi’ and ‘unify’ with the concept of ‘unify’, namely ‘to make or become one; unite’, since these two words are close to the Spanish, French and Italian verbs ‘unificar’, ‘unifier’, ‘unificare’. In this case, the signs are conceptually similar to this extent.

Finally, the pink background of the contested sign may be perceived as a label by a part of the public.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, 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.

As regards the contested sign, it should be noted that it is composed of a less distinctive figurative element namely the pink background, which may be perceived as a label too. Consequently, this figurative element has only a limited impact.

The marks under comparison have no element which could be considered 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 in relation to any of the goods and services at hand 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 services found to be identical or similar to varying degrees are directed at the public at large but mainly at business customers with specific professional knowledge or expertise. As some of the relevant services are highly specialised and can be expensive, the degree of attention ranges from average to high.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of

11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, §  22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17 et seq.).

The services are partly identical and partly similar to varying degrees.

The signs are similar to the extent that the whole earlier mark and the only verbal element of the contested sign are aurally identical and coincide visually in their first four letters out of five.

Moreover, the signs show a conceptual similarity for at least a part of the public.

The remaining differences lie in a figurative element that will be less noticeable to consumers. Indeed, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. In addition, in this case the pink background is considered less distinctive and moreover may be perceived as a label.

In addition, it has to be noted that the first parts of the conflicting marks are identical (‘unif’). Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Finally, account should be taken of the normal degree of distinctiveness of the earlier mark and the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind.

In the light of all the above, the Opposition Division concludes that the similarities between the marks are clearly enough to outweigh their dissimilarities, and may cause at least a part of the public to believe that the conflicting services come from the same undertaking or economically linked undertakings, despite a possible higher level of attention for some services. Thus, the Opposition Division considers that the marks under comparison convey similar overall impressions and that a likelihood of confusion between cannot be safely excluded for the French-, Italian- and Spanish-speaking part of the relevant public.

Likelihood of confusion has been considered to exist at least for a part of the relevant public. It is a result of the unitary character of the Community trade mark, laid down in Article 1(2) CTMR, that an earlier Community trade mark has identical protection in all Member States. Earlier Community trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Community. It follows that the principle laid down in Article 7(2) CTMR, which provides that it is sufficient that an absolute ground for refusal exists in only part of the Community for a trade mark application to be refused, applies, by analogy, to a relative ground for refusal under Article 8(1)(b) CTMR.

Therefore, the opposition is well founded on the basis of the opponent’s earlier Community trade mark registration No 9 911 851. It follows that the contested trade mark must be rejected for all the contested 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

Sonia MEHANNEK

Steve HAUSER

Vanessa PAGE

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.