OPPOSITION No B 2 541 442
Leap in Value, S.L., Ronda General Mitre 15, 7º, 3ª, 08017 Barcelona, Spain (opponent),
a g a i n s t
Sogec Gestion, 17 Avenue du Québec, 91140 Villebon sur Yvette, France (applicant), represented by Ernest Gutmann – Yves Plasseraud S.A.S., 3 rue Auber, 75009 Paris, France (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
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: Computer programs and software for classifying information, web security forums, websites and mailing lists, and for managing knowledge thereof.
Class 35: Office functions; Business management consultancy; Advertising, trade fairs for commercial purposes, market studies; Business management; Office function services; And wholesaling and retailing of the following goods: computer programs and computer software of all kinds and recorded on any carrier, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording disks, mechanisms for coin-operated apparatus, data processing equipment and computers.
Class 42: Management and consultancy relating to information, security incidents relating to information technology, security monitoring in the field of business operations and management, Data protection consultancy, Consultancy and programming of services relating to computer security.
The contested goods and services are the following:
Class 9: Computer software and software applications for the transmission, display, storage, management, tracking, analysis and presentation of data in the fields of advertising, marketing, sales promotion and customer relations management; Databases in the fields of advertising, marketing, sales promotion and customer relations management; Apparatus for recording, transmission and reproduction of sound or images; Recording substrates [magnetic]; Data processing equipment; Hand-held and mobile digital electronic devices for the sending and receiving of electronic mail, the sending and receiving of digital data; Computer telephone software, Electronic mail and messaging software; Computer software for providing access to a computer or data transmission network; software permitting to download pictures, sounds and data; Computer software to enable downloading of promotional coupons; Integrated circuit cards (smart cards), magnetic cards or chip cards.
Class 35: Advertising; Dissemination of advertising matter, namely leaflets, prospectuses, samples, coupons, tickets, discount or promotional vouchers and printed matter; Dissemination of advertising messages on media of all kinds, including digital media, advertising matter and classified advertisements, including on the internet; Publicity and marketing agency services; Direct marketing by means of computer networks and mobile communications networks; Global computer network-based interactive marketing and advertising consultancy services, including all global computer network-based marketing, design, consulting, media planning and buying, advertising and promotion services; Business management, Namely management of data used in the context of marketing and business activities; Market analysis and research services; Design, creation and development of business and advertising offers intended for others; Management of information systems, computer files and data in the fields of advertising, marketing, sales promotion and customer relations management; Compilation and systemisation of data and information in the fields of advertising, marketing, sales promotion and customer relations management contained in computer databases.
Class 38: Telecommunications; Information about telecommunication; Communications by computer terminals or by fibre optic networks; Providing user access to global computer networks; Provision of on-line forums; Providing access to databases; Providing user access to platforms on the internet; Electronic advertising services (telecommunications); Providing telecommunications connections to a global computer network; Electronic messaging; Rental of access time to global computer networks.
Class 42: Design and development of computer software and software applications for the storage, management, tracking, analysis and presentation of data in the fields of advertising, marketing, sales promotion and customer relations management; Development (design), installation, maintenance, updating or rental of computer software and software applications for the storage, management, tracking, analysis and presentation of data in the fields of advertising, marketing, sales promotion and customer relations management; Consultancy relating to the design and development of software applications for the storage, management, tracking, analysis and presentation of data in the fields of advertising, marketing, sales promotion and customer relations management; Providing of non-downloadable online software for the storage, management, tracking, analysis and presentation of data in the fields of advertising, marketing, sales promotion and customer relations management; Software as a service (SaaS) in the fields of advertising, marketing, sales promotion and customer relations management; Hosting of software applications and databases in the fields of advertising, marketing, sales promotion and customer relations management; Electronic storage of data in the fields of advertising, marketing, sales promotion and customer relations management.
Some of the contested goods, namely the contested computer software are identical to goods on which the opposition is based, namely the earlier computer programs and software for classifying information, web security forums, websites and mailing lists, and for managing knowledge thereof. The same applies to some of the contested services, namely advertising which is identically contained in both, the contested EUTMA and the earlier mark. 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 directed at both, the public at large as well as business customers with specific professional knowledge or expertise because especially the services are specialised services in the area of business management. The degree of attention may vary from average to high because some goods and services as for example specific databases, advertising or development services are expensive and have important consequences for the smooth running of a business.
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 earlier mark is a figurative mark composed of the capital letters ‘OPT-S’ written in blue and a light green circle in a manner of a bold letter ‘O’. This circle contains a slightly curved dash in its centre and six dotted lines at the bottom.
The contested sign is a purely figurative mark consisting of a green circle with two dots in its centre and a swash emanating from the bottom right hand part. In addition, this circle has a further three lines in a slightly lighter green at the bottom centre and left hand parts. As a whole the contested sign depicts a stylized creature similar to an octopus with four legs.
Neither of the signs has an element that could be considered clearly more distinctive than other elements.
The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements. On the contrary the green circle displaying the letter ‘O’ with its dash and dotted lines in the earlier sign is the dominant element as it is the most eye-catching as opposed to the blue standard letters.
Visually, the signs coincide in the form and colour of the green circle which forms the highly stylized figurative letter ‘O’ in the earlier mark and which is contained as part of the creature in the contested sign. All other elements of the earlier sign, namely the four capital letters ‘OPT’ and ‘S’ in blue have no corresponding elements in the contested sign.
Additionally, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is applicable to the earlier sign, indeed in this case the public reads the verbal element ‘OPTOS’ in the earlier mark and the stylized letter ‘O’ will merely be seen as a fanciful rendition of this letter of the alphabet. Furthermore, when comparing this part of the earlier sign to the contested sign there are clear differences. In the contested mark the figurative depiction will be seen as a device, but not as a letter.
Therefore, as a whole the signs can only be considered visually similar to a very low degree.
Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, the earlier sign ‘OPTOS’ does not have any meaning as such in any of language of the European Union; however, in some of the relevant languages it may be understood as a prefix making reference to ‘light, vision or sight’, such as in Slovak.
The contested mark only contains the figurative representation of a creature, which most likely will be recognised as an octopus. Thus, this is the concept of the contested sign. In view of the foregoing, they are not conceptually similar.
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 comparison of the signs has shown that they are similar only from a visual perspective and only to a low degree.
The opponent claims that the contested sign uses the same design of the image that is contained in the earlier sign. The Opposition Division cannot agree to this argument because the mere fact that both signs contain a circle with some lines at the bottom in a similar colour does not make the signs under comparison similar. In the earlier mark the green circle substitutes the letter ‘O’ whereas in the contested mark the circle serves as a basis for the picture of an octopus. This kind of creature is not recognisable in the earlier mark. Therefore, the visual similarity of the signs can only be considered remote.
The degree of attention of the relevant public may vary from average to high considering the goods and services in Classes 9, 35, 38 and 42 and the distinctiveness of the earlier mark must be seen as normal. Even considering the part of the public with an average degree of attention and who are more prone to confusion, the differences between the signs are considerable. Whilst it is true that the principle of interdependence is essential to likelihood of confusion and a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §17), even on the assumption that the goods and services are identical, the similarities between the signs can only be found on a visual level and, as noted above, are extremely limited. Indeed, the average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323 § 26) and as such will be well aware of the distinguishing differences between the marks. In such circumstances, those with a higher degree of attention will patently not be confused as to the origin of the goods and services in conflict.
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.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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
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.