OPPOSITION No B 2 636 481
Senetic SA, Kościuszki 227, 40-600 Katowice, Poland (opponent), represented by Magdalena Krekora, ul. Górna 95, 32-091 Michałowice, Poland (professional representative)
a g a i n s t
Venzo A/S, Langebrogade 6E, 4, 1411 Copenhagen K, Denmark (applicant), represented by Horten Advokatpartnerselskab, Philip Heymanns Allé 7, 2900 Hellerup, Denmark (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all 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: Cameras [photography]; Optical, measuring, signalling and control apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Data processing apparatus; Apparatus for recording, transmission or reproduction of sound or images; Microprocessors; Cash registers; Fixed and portable computers; Computing machines; Data processing equipment; Printers and other printing apparatus included in this class; Photocopiers [photographic, electrostatic, thermic]; Camcorders; Complete visual panels and elements thereof, optical disk drives; Scanners; Plotter printers; Modems, PCMCIA standard modems, external USB modems, modem cards; PC cards; Apparatus and parts of apparatus used for wired or wireless access to computer networks, including the Internet; Computer screens; Keyboard; Bar code readers; Slide projectors; Laser pointers; Power packs; Faxes; communications adapters; Telephone exchanges; Apparatus for reproduction of sound and images; Office machines included in this class; Automatic teller machines; Magnetic data media; Recording discs; Floppy disks; Sound and image recording discs; hard disk media; Network cards; Memory components; Computer programs (downloadable software); Network accessories; Electric cables, coaxial cables, optical cables.
Class 35: Business management and organisation consultancy; Business management assistance; Compilation and systemisation of information into electronic databases; File management (Computerized -); Data search in computer files for others; Commercial brokerage in the sale of computer hardware, computer software, data processing equipment, office machines, data transmission apparatus and electric and electronic apparatus; Brokerage relating to compilation and systemisation of information into computer databases, data search in computer files for others and computerised file management, leasing of office machines, information relating to the aforesaid services; Business consultancy in the field of data processing equipment and office machines.
Class 36: Lease-purchase of computer hardware, computer software, computer networks, data processing equipment, office machines, data transmission apparatus and electric and electronic apparatus; Asset management, including shared assets; Consultancy relating to assets trading; Trading of real estate; Fund investments; Provision of financial advice; Building capital and capital expenditure; Arranging of funds; Banking, for others; Coordination and supervision of financial affairs; Analysis (Financial -); Information about the aforesaid services.
Class 37: Installation, maintenance and repair of computers, calculating machines, data processing equipment, computer networks, computer hardware, electric and electronic equipment; Installation of cabling for electric and electronic apparatus in buildings, including for air-conditioning systems and computer networks; Information about the aforesaid services; Agency services in the field of installation, updating and repair of computer hardware.
Class 38: Telecommunications; Data transmission; Message sending via electronic apparatus, leasing of apparatus for data transmission; Information about the aforesaid services; Communication consultancy in the field of data transmission apparatus.
Class 41: Education and providing of training, in particular organisation of training relating to computer and networking hardware and software infrastructure; Information relating to the aforesaid services.
Class 42: Consultancy in the field of computer hardware; Computer software consultancy; Providing (design of) Internet search engines; Data conversion of computer programs and data [not physical conversion]; Installation of computer software; Recovery of computer data; Computer programming; Computer system design; Computer rental; Maintenance of computer software; Conversion of data or documents from physical to electronic media; Computer software (updating of-); Duplication of computer programs; Computer software design; Rental of computer software; Rental of web servers; Creating and maintaining web sites for others; Computer virus protection services; Hosting computer sites (websites).
The contested goods and services are the following:
Class 9: Apparatus, instruments and installations for telecommunications, including for telephony; telephones and mobile telephones; apparatus for recording, transmission or reproduction of sound or images; magnetic and optical data carriers, sound recording carriers, electronic publications (downloadable or recorded); transmitting and receiving equipment, including antennas and dish aerials, data processing equipment for telecommunications, computer hardware and software (downloadable or recorded), accumulators and batteries, transformers and converters, encoders and decoders, encoded cards and magnetic cards for encoding; parts and fittings for all the aforesaid goods (not included in other classes).
Class 35: Consultancy in the form of hiring IT specialists; business administration and management; consultancy with regard to data processing; business optimisation consultancy.
Class 38: Telecommunication services, including providing access to interactive user interfaces being communication media between users and providers as well as buyers and sellers, information about telecommunication; communications by telephone and by telegraphs, communications by computer terminals and mobile telephones, including communication between mobile telephones and internet sites, radio and television broadcasting, including via cable TV, message sending, rental of apparatus for message sending, rental of telecommunications apparatus, including telephone apparatus and operation thereof, telephone paging services, data transmission; broadband communications, IP telephony.
Class 42: Updating and design of computer programs; analyzing of computer systems; computer virus protection services; consultancy relating to and design of computer software, computer security; installation and maintenance of computer software; computer programming; computer system design; creating and maintaining web sites for others; information relating to maintenance and support services for computer software; computer hardware consultancy; hosting of web pages for others.
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 terms ‘in particular’ and ‘including’, used in the list of goods and services of the parties, 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).
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.
Contested goods in Class 9
The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; sound recording carriers; parts and fittings for all the aforesaid goods (not included in other classes) are identically contained in both lists of goods (including synonyms).
The contested optical data carriers; parts and fittings for all the aforesaid goods (not included in other classes) overlap with the opponent’s sound and image recording discs, as the latter can also be of an optical nature Therefore, they are identical.
The contested apparatus, instruments and installations for telecommunications, including for telephony; telephones and mobile telephones; transmitting and receiving equipment, including antennas and dish aerials, data processing equipment for telecommunications, computer hardware and software (downloadable or recorded), accumulators and batteries, transformers and converters, encoders and decoders, encoded cards and magnetic cards for encoding; parts and fittings for all the aforesaid goods (not included in other classes) are included in the broad category of, or overlap with, the opponent’s apparatus for transmission of sound or images. Therefore, they are identical.
The contested electronic publications (downloadable or recorded); parts and fittings for all the aforesaid goods (not included in other classes) can coincide in producer, consumer and distribution channels with the opponent’s computer programs (downloadable software). Furthermore, they can be complementary. The goods are similar.
Contested services in Class 35
The contested consultancy in the form of hiring IT specialists are included in the broad category of the opponent’s organisation consultancy. Therefore, they are identical.
The contested business optimisation consultancy; business administration are included in the broad category of, or overlap with, the opponent’s business management assistance. Therefore, they are identical.
The contested business management is identically contained in both lists of services.
The contested consultancy with regard to data processing include, as a broader category, the opponent’s business consultancy in the field of data processing equipment. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
Contested services in Class 38
All the contested services in this class are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.
Contested services in Class 42
The contested updating and design of computer programs; computer virus protection services; installation and maintenance of computer software; computer programming; computer system design; creating and maintaining web sites for others; computer hardware consultancy; hosting of web pages for others are identically contained in both lists of services (including synonyms).
The contested consultancy relating to and design of computer software, computer security; information relating to maintenance and support services for computer software; analyzing of computer systems are included in the broad category of the opponent’s computer software consultancy. Therefore, they are identical.
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 found to be identical or similar are directed at the public at large, for example apparatus for recording, transmission or reproduction of sound or images, and at customers with specific professional knowledge or expertise, for example analyzing of computer systems. The degree of attention varies from average to above average.
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 are word marks containing a single distinctive word element. There are no dominant elements in the marks. For the Spanish speaking public, the word VENZO in the contested mark means the present tense singular of the word VENCER (to win, beat, overcome).
Visually, the signs coincide in the letters VEN_O, and in their overall length of five letters. However, they differ in the letters S/Z placed on the fourth position in the marks.
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 syllables VEN, and in the ending of the second syllable SO/ZO. The pronunciation differs in the letters S/Z. It cannot be denied, however, that for part of the public, the pronunciation of the letters S/Z also produces a similar sound. This is because the letter ‘S’ and ‘Z’ are both alveolar fricatives.
Therefore, the signs are aurally highly similar.
Conceptually, the earlier sign has no meaning for the relevant public. For the Spanish speaking public, the word VENZO is the present tense singular of the word VENCER (to win, beat, overcome). For the Spanish public, the signs are conceptually dissimilar. For the remaining public, the contested mark has no meaning, and since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for the non-Spanish speaking public..
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 have been found to be partially identical and partially similar. The similarities and dissimilarities between the signs have been established. The level of attention varies from average to above average.
The signs have been found to be similar to the extent that they share the four letters VEN_O out of five. The two word elements of the marks under comparison have identical lengths and similar rhythms and are confusingly similar for the consumer from and aural and visual point of view. The differentiating letters S/Z in the signs are placed in a non-prominent position in the middle of the signs and can easily be absorbed in sound by the surrounding letters. Furthermore, the letters S/Z have a similar sound when pronounced, for part of the non-Spanish speaking public. The marks can be easily mistaken by the non-Spanish speaking public when seen or pronounced.
Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting goods and services, which are identical and similar, come from the same undertaking or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public, even for that part of the public that pays a higher degree of attention and is normally less vulnerable for confusion.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 468 329. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Chantal VAN RIEL
Begoña URIARTE VALIENTE
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.