OPPOSITION No B 2 524 208
Sicos BW GmbH, Nobelstraße 19, 70569 Stuttgart, Germany (opponent), represented by Right Anwaltskanzlei, Esslinger Str. 8, 70182 Stuttgart, Germany (professional representative)
a g a i n s t
SICS Swedish ICT AB, Isafjordsgatan 22, 164 40 Stockholm, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Box 7067, 402 32 Göteborg, Sweden (professional representative).
On 24/05/2016, the Opposition Division takes the following
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
SUBSTANTIATION of German trade mark registration No 302 012 033 808
According to Article 76(1) EUTMR, 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) EUTMIR, 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) EUTMIR, 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 European Union 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) EUTMIR.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.
In the present case the evidence filed by the opponent, namely an extract from the German Patent and Trade mark Office, is not in the language of the proceedings.
On 01/06/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 06/12/2015.
The opponent did not submit the necessary translation.
According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that the evidence filed by the opponent cannot be taken into account.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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 German earlier trade mark.
The examination of the opposition continues on the basis of earlier European Union trade mark registration No 10 990 042.
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.
The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Supercomputers; computer memory devices; interfaces for computers; magnetic encoders; computer software for supercomputers; workstation clusters and other powerful computers and the shared use of the aforesaid systems and software for numeral simulations (calculations) of physical properties and other complex systems, and software tools for the development, support, use and application thereof; software for the use, development and optimisation of locally and globally networked computer systems, and the management thereof; software for the storage of large amounts of data, and the processing thereof and local or global access thereto; all the aforesaid goods being in the field of support, consultancy, brokerage of companies in relation to the use and application of high performance computers, calculation applications and simulations.
Class 35: Drawing up statistics and other evaluations; analysis; cost-price analysis; analysis of technical processes in the research and development and economic effects thereof on the entire business operation (including production and distribution), in particular demonstrating optimisation potential in the use of new technical methods; business efficiency expert services; efficiency experts for the use of products and technologies for numerical simulations; storage technologies, suitable computer systems and networked installations, for cooperation with suitable partners; commercial information, in particular in the field of research and development; consultancy relating to the organisation and management of businesses, in particular in the designing of development processes and research activities, procurement services for others (purchasing goods and services for other businesses); administrative processing of orders, namely it products, namely software and services relating thereto; computerized file management; computerized file management, in particular storing and processing large volumes of data; systemization of information into computer databases; systemising simulation results and measurement-like data in computer databases; compilation of information into computer databases; compiling simulation results and measurement-like data in computer databases; organisation, consultancy and mediation, for others, for all the aforesaid services; project management for it projects, including with and for others; coordination of it projects on behalf of and/or with others; providing business information relating to investigations into suitable partners, products and technologies for numeral simulations, storage technologies, suitable computer systems and networked installations; consultancy in the organisation and management of businesses in the fields of research and development; organisational business consultancy relating to the use of products and technologies for numeral simulations, storage technologies, suitable computer systems and networked installations, cooperation with suitable partners; outsourcing services [business assistance], namely mediation of suitable partners, support for competency analysis, handling of outsourcing projects; consultancy in matters relating to human resources and the selection of personnel; arranging of contracts, for others, for the buying and selling of goods; arranging of contracts, for others, for the providing of services; all the aforesaid services being in the field of support, consultancy, brokerage of companies in relation to the use and application of high performance computers, calculation applications and simulations.
Class 38: Providing access to databases; providing access to supercomputers for simulation purposes in product development and product research; providing access to resources (powerful data processing systems, in particular hardware, computers, storage space, network access and software) in high performance computing (HPC), for large scale data (LSDF = large amounts of data) and for grid computing; providing access to supercomputers, workstation clusters and other powerful computers and the shared use of the aforesaid systems; providing access to powerful data processing systems, in particular supercomputers for numeral simulations and handling large amounts of data, shared locally and globally; providing access to local or global computer systems enabling the storage of large amounts of data; organisation, consultancy and mediation, for others, for the aforesaid services, and for concluding contracts for the selection of the aforesaid services, included in class 38; project planning, project management, project support and project sponsorship for projects in the field of the aforesaid services, included in Class 38; all the aforesaid services being in the field of support, consultancy, brokerage of companies in relation to the use and application of high performance computers, calculation applications and simulations.
Class 42: Research, definition, development, design, implementation and analysis of digital experiments/investigations and support for others in these matters; simulations; calculations; calculations using numerical methods based on mathematical models for replicating properties and processes from the real world, including processing abstract processes in the field of data processing; simulation of properties and processes which cannot be investigated in the real world, or can only be investigated at disproportionate cost, and analysing data of any kind (measurement data, simulation data etc.) on computers for research and economics; use of computer for simulating properties and processes in the product development of products from the physical world; creating computer animations, data conversion of computer programs and data (not physical conversion); mathematics services; mathematics services, in particular calculations (numerical simulations) on supercomputers for research and economics; scientific services; providing of research results and services in the field of numerical simulation, handling large amounts of data and the shared working with computer systems, in particular in high performance computing, for large scale data and for grid computing; drawing up technical statistics and other technical evaluations; technical analysis; surveying; technical project studies; technical project management; technical project management in the field of electronic data processing; technical support for software projects; consultancy for software projects; research and development of new products for the benefits of others; providing of scientific information and consultancy for improving research and product development processes; providing scientific information and consultancy in the field of computer simulations for testing purposes; mediation in scientific information and consultancy in the field of computer simulations for testing purposes; mediation in scientific information and consultancy in the aforesaid services included in Class 42; mediation in scientific information and consultancy in the aforesaid services included in Class 42; assistance and mediation, for others, for concluding contracts for the selection of the aforesaid services included in Class 42; project planning, project management, project support and project sponsorship for projects in the field of the aforesaid services included in Class 42, hardware and software consultancy in the field of high performance computing (HPC), large scale data facilities (LSDF), grid computing and the use of simulation and calculation programs; all the aforesaid services being in the field of support, consultancy, brokerage of companies in relation to the use and application of high performance computers, calculation applications and simulations.
The contested goods and services 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 carries; apparatus for transmission, reception, storing and conversion of voice, image and text signals in data communication and telecommunication installations; data processing equipment, computers; computer software; recorded content; computer software; virtualization software; programs (computer -) [downloadable software]; computer software platforms; computer databases; sensors, detectors and sensor networks; computer software in the form of apps; information technology and audiovisual equipment; measuring, detecting and monitoring instruments, indicators and controllers; information technology and audiovisual equipment; signal cables for IT, AV and telecommunication; scientific research and laboratory apparatus, educational apparatus and simulators; measuring, counting, alignment and calibrating instruments; controllers (regulators); telecommunications apparatus; communications equipment; computer networking and data communications equipment.
Class 35: Advertising; business management; business administration; business analysis, research and information services; market research; market research; business assistance, management and administrative services; business consultancy and advisory services; business management services relating to the development of businesses; business advisory services relating to product development; analysis of business models; business appraisals; business development; business appraisals; establishing a network of business contacts (service to assist in -); consultancy relating to commercialisation of products and computer software; business development relating to information and communications technology; business analysis, research and investigations; business development relating to broadband infrastructure; business analysis, research and investigations; business project management; processing, storage, retrieval and/or checking (supervision) of computerised information; collection and compilation of computerised information and preparation of presentations; Information, advice and consultancy in respect of the aforesaid services.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; development of online education; providing of training; providing of centres of excellence; training services relating to computer-aided engineering design; professional development; educational services; providing lectures, workshops and seminars; information, advice and consultancy in respect of the aforesaid services; all the aforementioned services not relating to finance, monetary affairs, banking and stock exchange.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; science and technology services; research and development services; research and development in the field of information and communications technology (ICT); research and development in relation to computer programming; research and development in relation to user-friendly services and products, network systems, technology services, cloud and big data analysis, increasing efficiency and optimisation, computer software and engineering; research and development in relation to automation, telecommunications and the internet, transport, production systems, health, the vehicle, railway and defence industries; research and development in relation to and concerning sensor systems and computer software systems, computer systems, computer software, mobile web services, telecommunications, network services and technology platforms; research and development of instrument products including for measuring, analysis, testing, examination, investigation and evaluation; research and development of technology, for others; research and development of new products and computer software, for others; systems architecture; software development, programming and implementation; research and development (for others); production of prototypes, for others; it services; testing, authentication, verification and quality control; engineering services; technical analysis and project services; big data analysis (technical analysis); hosting services and software as a service and rental of software; IT consultancy, consultancy and information; platform as a service [PaaS]; providing of mobile data (computer software); maintenance and development of databases; conducting industrial experiments; developing programs for simulating experiments or series of experiments in a virtual optical laboratory; providing installation and equipment for experiments; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; providing of design and simulation tools; design and simulation services; visualisation (computer services); IT services; application virtualisation; virtualisation (computer services); providing software for visualisation; interactive services (computer services); testing, authentication and quality control; computer software development and systems development; process modelling (computer services); modelling and design; development of process modelling (computer services); maintenance and development of databases; surveying, inspection and research services; network development and network architecture; network design and network analysis; measuring and testing of networks; network development and business development in relation to broadband infrastructures; applied research and development; contract research; feasibility studies (research services); product research, development and information; processing and product development; prototype development; productisation, authentication and testing; evaluation, measuring, calibration and monitoring; network monitoring; quality assurance consultancy; IT infrastructure services; industrial development and process development; computerised analysis of data; natural science services; providing of testing online; information, advice and consultancy relating to the aforesaid services.
Some of the contested goods and services are identical to 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 to those of the earlier mark.
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 are partly directed at the public at large and partly are specialised goods and services directed at business customers with specific professional knowledge or expertise. The degree of attention of the public will vary from average to high.
Earlier trade mark
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 marks under comparison are both word marks, the earlier mark being the five-letter-word ‘SICOS’ and the contested sign the four-letter-word ‘SICS’. None of the marks under comparison bear a meaning for the public in the relevant territory and thus, none of the signs has elements that could be considered clearly more distinctive than other elements. Likewise, as single word marks, none of the signs has elements that are more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘SIC*S’ and differ in the additional vowel ‘O’ of the earlier mark, placed in fourth position.
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.
As the signs under comparison are rather short signs, the diverging letter ‘O’ will be clearly perceived by the relevant public. Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘SIC*S’, present in both signs. The pronunciation differs in the sound of the additional letter ‛O’ of the earlier sign, which has no counterpart in the contested mark. This additional letter ‘O’ in the earlier mark creates a noticeable aural difference between the signs as the earlier mark will be pronounced in two syllables, but the contested mark in only one syllable. The signs have therefore, a different length, rhythm and intonation. For this reason, the signs are considered aurally similar to a low degree.
Conceptually, neither of the signs has a meaning 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.
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.
Global assessment, other arguments and conclusion
The goods and services were assumed to be identical. They are directed partially at the public at large and partially at a professional public. Since part of the goods and services are highly specialized, the level of attention of the public will vary from average to high.
The signs have their greatest similarity in the visual comparison in that both include the same letters ‘SIC’ and ‘S’. However, being relatively short signs, the public will be more aware of the differences existing between them, namely the additional letter ‘O’ of the earlier sign which will be clearly perceived by the public.
Moreover, from the aural perspective, this additional letter creates noticeable differences between the signs as the number of syllables which compose the signs is different, i.e. two in the earlier mark and only one in the contested sign. Indeed, the additional vowel in the earlier mark creates a different length, rhythm and intonation in the pronunciation of the signs, which safely enable consumers, even with an average degree of attention, to distinguish between the signs.
Although all the letters of the contested sign are included in the earlier mark, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences, especially from the aural viewpoint, that outweigh the similarities.
Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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
Inés GARCÍA LLEDÓ
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.
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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.