OPPOSITION No B 2 612 961

Abbsolute Comunicación, S.L., Avda. de Los Descubrimientos, 11 - 4º Izda., 41092 Sevilla, Spain (opponent), represented by Consiangar, S.L., Calle Albasanz, 72-1º 1, 28037 Madrid, Spain (professional representative)

a g a i n s t

Absolute Software Corporation, Suite 1600, Four Bentall Centre, 1055 Dunsmuir Street, Vancouver, British Columbia V7X 1K8, Canada (applicant), represented by Bech-Bruun Law Firm, Langelinie Allé 35, 2100 København Ø, Denmark (professional representative).

On 25/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 612 961 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 433 304 , namely goods and services in Classes 9 and 42. The opposition is based on Spanish trade mark registration No 3 044 982 . The opponent invoked Article 8(1)(a) and (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 and services

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

Class 35: Advertising, marketing and promotional services, planning of marketing strategies and marketing.

The contested goods and services are the following:

Class 9: Computer software for use in relation to management of information technology assets and life cycles and power; computer software for use in relation to it administration; computer software for use in relation to information technology asset management for mobile equipment; computer software for use in relation to generation of security access codes for accessing self-encrypting drives; recorded computer software for personal mobile equipment for data protection through the activation of automatic enforcement of data protection policies and procedures; security software and equipment for computers, tablets, personal digital assistants (PDAs), mobile telephones and other computer devices, namely computer disks and EPROMs; manuals for security systems for computers, tablets, personal digital assistants (PDAs), mobile telephones and other computer devices.

Class 42: Installation, implementation and continuous assistance and maintenance of computer software for use in relation to management of information technology assets and life cycles and power; installation, implementation and continuous assistance and maintenance of computer software for use in relation to it administration; installation, implementation and continuous assistance and maintenance of computer software for use in relation to information technology asset management for mobile equipment; installation, implementation and continuous assistance and maintenance of computer software for use in relation to generation of security access codes for accessing self-encrypting drives; installation, implementation and continuous assistance and maintenance of recorded computer software for personal mobile equipment for data protection through the activation of automatic enforcement of data protection policies and procedures; monitoring and tracing of computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices; location of lost or stolen computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices by means of monitoring, wherein telecommunications equipment is maintained for receiving telephone signals which are sent out from computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices programmed with software designed to contact a monitoring service centre continuously or in the event of theft or loss of said computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices.

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 computer software for use in relation to management of information technology assets and life cycles and power; computer software for use in relation to it administration; computer software for use in relation to information technology asset management for mobile equipment; computer software for use in relation to generation of security access codes for accessing self-encrypting drives; recorded computer software for personal mobile equipment for data protection through the activation of automatic enforcement of data protection policies and procedures; security software and equipment for computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices, namely computer disks and eproms; manuals for security systems for computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices consist mainly of software, which is part of a computer system consisting of encoded information or instructions given to a PC or similar device so that it performs certain operations. The contested goods in Class 9 also cover equipment for computers and other devices, and manuals related to the security systems for those devices.

The opponent’s services, namely advertising, marketing and promotional services, planning of marketing strategies and marketing, consist mainly of the promotion of goods or services through various media channels (e.g. TV) and associated industries, namely the design and delivery of publicity and marketing.

Even if the opponent’s goods are used daily for a wide range of purposes in a variety of industries, this is not enough on its own to lead to similarity. According to the definitions above, the contested goods are considered dissimilar to the opponent’s services, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings.

Contested services in Class 42

The contested installation, implementation and continuous assistance and maintenance of computer software for use in relation to management of information technology assets and life cycles and power; installation, implementation and continuous assistance and maintenance of computer software for use in relation to it administration; installation, implementation and continuous assistance and maintenance of computer software for use in relation to information technology asset management for mobile equipment; installation, implementation and continuous assistance and maintenance of computer software for use in relation to generation of security access codes for accessing self-encrypting drives; installation, implementation and continuous assistance and maintenance of recorded computer software for personal mobile equipment for data protection through the activation of automatic enforcement of data protection policies and procedures; monitoring and tracing of computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices; location of lost or stolen computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices by means of monitoring, wherein telecommunications equipment is maintained for receiving telephone signals which are sent out from computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices programmed with software designed to contact a monitoring service centre continuously or in the event of theft or loss of said computers, tablets, personal digital assistants (pdas), mobile telephones and other computer devices consist mainly of services related to different kinds of software, targeting software users who might need help with the installation, implementation and assistance of said goods. The contested services in Class 42 also include services related to finding computers and other devices.

According to the definitions above, it is considered that the contested goods are dissimilar to the opponent’s services, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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 goods and services are obviously not identical.

COSTS

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

Richard THEWLIS

María del Carmen SUCH SANCHEZ

Benoit VLEMINCQ

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.