OPPOSITION No B 2 538 158

Towers Watson Software Limited, Saddlers Court, 64/74 East Street, Epsom, Surrey KT17 IHB, United Kingdom (opponent), represented by Dla Piper UK LLP, Princes Exchange, Princes Square, Leeds LS1 4BY, United Kingdom (professional representative)

a g a i n s t

Igloo SAS, 71 boulevard Voltaire, 75011 Paris, France (applicant), represented by Cabinet August & Debouzy, 6 avenue de Messine, 75008 Paris, France (professional representative).

On 04/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 158 is upheld for all the contested goods, namely:

Class 9: Computer software applications, downloadable; applications software for mobile telephony apparatus; Software for integration of applications and databases; Applications software.

2. European Union trade mark application No 13 730 114 is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 730 114 for the figurative mark , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 3 701 851 for the word mark ‘IGLOO’. The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods

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

Class 9: Computer software; computer software for financial modelling.

The contested goods are the following:

Class 9: Computer software applications, downloadable; applications software for mobile telephony apparatus; Software for integration of applications and databases; Applications software.

Application software, also known as ‘an app’, is a program or piece of software designed and written to fulfil a particular purpose of the user. The new definition of an application is used to refer to the small apps that are designed for mobile phones; however, the definition covers all applications on smartphones, tablets and computers.

The contested computer software applications, downloadable; applications software for mobile telephony apparatus; software for integration of applications and databases; applications software are included in the broad category of the opponent’s computer software. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at a professional public with specific knowledge and expertise. The degree of attention is considered average.

3. The signs

IGLOO
Earlier trade mark	Contested sign

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 earlier trade mark is the word mark ‘IGLOO’. The contested trade mark contains the same word but also contains a figurative element in the form of a semi-circle above it. There is an additional fanciful figurative element in the middle of the semi-circle.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, 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.

The coinciding element ‘IGLOO’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

An ‘igloo’ is an Eskimo house usually made of sod, wood or stone when permanent or of blocks of snow or ice in the shape of a dome when built for temporary purposes.

Bearing in mind that the relevant goods are software-related, the verbal element ‘IGLOO’ is distinctive for all the goods.

The figurative elements in the contested sign are fanciful and have a normal degree of distinctiveness.

Neither sign has any element that is more dominant (visually eye-catching) than others.

Visually, the signs coincide in the distinctive word ‘IGLOO’, which constitutes the entire earlier mark and the only verbal element of the contested sign. However, they differ in the slight stylisation of the verbal element and in the figurative elements of the contested sign.

When signs consist of both verbal and figurative components, in principle, 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 more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IGLOO’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning an Eskimo house, ‘IGLOO’, and as the figurative elements in the contested sign are fanciful and do not evoke a specific concept, the signs are conceptually identical.

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

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove such claim.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark has a normal degree of inherent distinctiveness.

The relevant public is the public at large and professionals; the degree of attention is average.

The conflicting goods are identical.

The signs are visually highly similar and aurally and conceptually identical.

Considering the above, it is considered that the English-speaking public might be led to believe that the goods come from the same undertaking or economically linked undertakings. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 701 851. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

María Luisa ARANDA SALES

Raphaël MICHE

Saida CRABBE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.