OPPOSITION No B 2 616 970

Ic Intracom Italia Spa, Viale Europa, 33 - Z.I. Cornadella Sud, 33077 Sacile (PN), Italy (opponent), represented by Dragotti & Associati S.R.L., Via Nino Bixio 7, 20129 Milano, Italy (professional representative)

a g a i n s t

Yiwu Weitu Crafts Co., Ltd., Shanzhutou, Suxi Industrial Zone, Yiwu City, Zhejiang Province, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 616 970 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programmes [programs], recorded; computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable.

Class 42: Updating of computer software.

2. European Union trade mark application No 14 513 601 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 513 601. The opposition is based on European Union trade mark registration No 10 061 992. 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 and services

The goods on which the opposition is based 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 carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

The contested goods and services are the following:

Class 9: Computer programmes [programs], recorded; computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable.

Class 35: Presentation of goods on communication media, for retail purposes; providing business information via a web site; sales promotion for others; updating and maintenance of data in computer databases.

Class 42: Updating of computer software; conversion of data or documents from physical to electronic media.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 programmes [programs], recorded; computer operating programs, recorded; computer software, recorded; computer programs [downloadable software]; computer game software are a variety of computer programmes. The contested computer software applications, downloadable are in their nature, application software that is designed to help the user perform various tasks on a computer. It is usually created with the user in mind and it includes applications that could be used on smartphones, tablets and computers. The contested goods, listed above, and the opponent’s computers are designed to function together and therefore they are complementary. They could also be produced by the same producer, target the same end user and are usually distributed through the same distribution channels. It follows that these are similar.

The contested computer peripheral devices are auxiliary devices, such as printers and keyboards that connect and work with computers. These are, therefore, complementary to the opponent’s computers. The goods also coincide in producer, end user and distribution channels. It follows that these are similar.

Contested services in Class 35

The contested services in this class encompass the presentation of goods on media for retail purposes; informational services oriented towards professionals and helping them to successfully run a business; services helping the internal day-to-day operations of an organisation (e.g. updating and maintenance of data in computer databases) and promoting for others. These services are usually provided by specialists in the given area, such as business consultants (for the business oriented information) or advertising companies (e.g. for the services of promoting sales).

The opponent’s goods are a variety of appliances, apparatus and carriers (Class 9 and 11); paper, cardboard and certain goods made of those materials, as well as office requisites (Class 16); furniture and parts thereof and certain goods, made of different material and used for interior decoration and furnishing purposes (Class 20).

Apart from being different in nature, since services are intangible whereas goods are tangible, the goods and services in comparison serve different needs. Furthermore, they have different methods of use and are neither in competition nor necessarily complementary. The fact that the opponent’s goods could be subject of some of the opponent’s services (e.g. presentation of goods on communication media, for retail purposes) is insufficient for finding similarity. The manufacturer of the opponent’s goods would not coincide with the provider of the contested services. Furthermore, they do not coincide in their distribution channels. It follows that these are dissimilar.

It is noted that the earlier mark is registered for the entire class headings of Classes 9, 11, 16 and 20 of the 9^th edition of the Nice Classification. However, even if the earlier mark covered all the goods from the entire alphabetical lists of these classes, these goods (e.g. mouse pads; eyeglass chains in Class 9; lighters in Class 11) and the contested services would be dissimilar, as they do not coincide in nature, purpose or method of use. Furthermore, they would be neither complementary, nor necessarily in competition and would not coincide in producer or distribution channels.

Contested services in Class 42

The contested updating of computer software are services related to modifying certain software, such as fixing problems on the software or in general enhancing its performance. These services are closely linked to the opponent’s computers. This is because in the field of computer science, producers of computers and/or software will also commonly provide computer and/or software-related services (as a means of keeping the system updated, for example).

Consequently, and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services coincide. Furthermore, they are complementary goods and services. For these reasons these are considered similar.

However, the contested conversion of data or documents from physical to electronic media are services which are providing the transformation of information from a physical to an electronic form, for instance from paper to a computer file (digitization of documents). These are not services related to writing a programme code or its further modifications. Furthermore, these services are not usually provided by the same undertaking as those manufacturing the opponent’s goods. The goods and services in comparison are neither in competition, nor necessarily complementary. Furthermore, they do not coincide in their distribution channels. It follows that these are dissimilar.

As mentioned above, the earlier mark is registered for the entire class headings of Classes 9, 11, 16 and 20 of the 9^th edition of the Nice Classification. However, even if the earlier mark covered all the goods from the entire alphabetical lists of these classes, these goods (e.g. mouse pads; eyeglass chains in Class 9; lighters in Class 11) and the remaining contested services would be dissimilar, as they have no point of contact that would bring a level of similarity between them.

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 and services found to be similar are directed at the public at large, but also at some business customers, searching for specific IT solutions. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. The signs

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 contested sign is a figurative sign, consisting of the sequence of letters ‘T-I-Y’, written in white slightly stylised upper-case letters, placed against a black square shape with round angles.

The earlier mark is a figurative sign, which is likely to be perceived as a sequence of three stylised letters in black, placed against a white square shape with round angles, bordered by a thin black line. The first letter is the capital letter ‘T’, depicted with two straight lines separated from one another. The rest of the letters are in handwritten style and due to their stylisation could be perceived either as ‘L-Y’ (l-y) or as ‘I-Y’ (i-y). Therefore, the entire sequence is likely to be perceived as the sequence of letters ‘Tly’ or ‘Tiy’.

According to the case law, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, considering that the similarities between the signs will be higher to the extent that a significant part of the public will perceive the earlier mark as containing the sequence of letters ‘Tiy’, for reasons of economy of proceedings the Opposition Division will focus its examination on this part of the public.

The elements ‘Tiy’/’TIY’ of the signs have no meaning for the relevant part of the public and are, therefore, distinctive.

The square background shapes with round angles in both signs do not convey any particular meaning. Furthermore, they are of a purely decorative nature and therefore their distinctiveness is lower than average. It follows that, the verbal elements ‘Tiy’/’TIY’ of the signs are more distinctive than the figurative elements.

The signs have no elements that could be considered clearly more dominant than other elements.

Following form the above, conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the sequence of letters ‘Tiy’/’TIY’ and the background shapes. They differ in the stylisations of the letters and the colour inversion of the elements, namely black letters against white background (further bordered in black) in the earlier mark versus white letters against black background in the contested sign.

Therefore, due to the coinciding sequence of letters and background shapes, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘T-I-Y’, present identically in both signs. Therefore, the signs are aurally identical.

As the signs have been found similar (and even identical) 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 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 in question from the perspective of the relevant part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a less distinctive element (namely the background shape) in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods were found similar to the opponent’s goods and the contested services were found partly similar and partly dissimilar to the opponent’s goods. The degree of attention will vary from average to higher than average when choosing the relevant goods and services.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It has been also established above that the signs are visually similar to a high degree and aurally identical, due to the coincidences between the sequence of letters ‘Tiy’/’TIY’ and the background shapes. The signs differ in the stylisation of the letters and the colour inversion.

Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), even when the level of attention is higher than average.

In its observations, the applicant claims that the marks are dissimilar and it refers to previous decisions of the Office to support its arguments. The applicant also submits printouts from Internet, depicting the contested sign in relation to jewellery on several webpages, as well as on a couple of purchase orders.

However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The marks concerned in the case quoted by the applicant are not comparable to the marks at issue, as they concern signs where one of them has a particular meaning, when the other lacks a meaning. This is not the case at issue, as both signs would be perceived as the same sequence of letters, which does not convey any particular meaning.

Furthermore, the printouts and purchase orders submitted by the applicant only exhibit the contested sign in regard to goods which are not relevant for the case at issue. They do not provide any information in support of the applicant’s claim for dissimilarity of the signs, as there is no reference to the earlier mark or any possible perception of the signs by the relevant public. Therefore, the claim of the applicant has to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that would perceive the earlier mark as containing the sequence of letters ‘Tiy’. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

Irina SOTIROVA

Erkki MÜNTER

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.