DECISION

DECISION

of the Fourth Board of Appeal

of 28 October 2019

In Case R 564/2019-4

Bilot Core Oy

Porkkalankatu 22 A

00180 Helsinki

Finland

Applicant / Appellant

represented by BOCO IP OY AB, Itämerenkatu 5, 00180 Helsinki, Finland

pilot Hamburg GmbH & Co. KG

Neue Rabenstraße 12

20354 Hamburg

Germany

Opponent / Defendant

represented by EBNER STOLZ MÖNNING BACHEM, Ludwig-Erhard-Straße 1, 20459 Hamburg, Germany

APPEAL relating to Opposition Proceedings No B 2 670 902 (European Union trade mark application No 14 889 208)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

European Union trade mark application No 14 889 208 was filed on 8/12/2015 by Bilot Core Oy (‘the applicant’) for the word mark

BILOT

for the following list of goods and services:

Class 9 – Computer software; Computer hardware; computer programs, recorded and downloadable; computer operating programs, recorded; computer software applications, downloadable; Computer software for use in customer relationship management (CRM); Computer software for use in enterprise resource planning (ERP); Computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software for use in master data management, Business intelligence, analytics, business planning, pricing, profitability management, commerce, customer relationship management, Service design, collaboration and workflow solutions, user interfaces, enterprise resource planning, Big data and Internet of things.

Class 35 – Business management and organization consultancy; business efficiency expert services; business management for freelance service providers; Business management consultancy in regard to strategy, business process, marketing, sales, operation and product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; Search engine optimization; web site traffic optimization; outsourcing services [business assistance]; Outsourcing services in the field of customer relationship management; Business intelligence services; cost price analysis; systemization of information into computer databases; updating and maintenance of data in computer databases; business management and organization consultancy in the fields of master data management, Business intelligence, analytics, business planning, pricing, profitability management, commerce, customer relationship management, Service design, collaboration and workflow solutions, user interfaces and enterprise resource planning.

Class 42 – Design and development of computer software; computer programming; development and testing of computing methods, algorithms and software; development of computer software application solutions; software programming and implementation; installation of computer software; Installation and customisation of computer applications software; Technical consultancy relating to the application and use of computer software; Development and implementation of software, hardware and technology solutions for electronic commerce websites; Design, maintenance, development and updating of enterprise resource planning and customer relationship management software; consultancy in enterprise resource planning and customer relationship management software; software as a service [SaaS]; Customer relationship management software as a service [SaaS]; Enterprise resource planning software as a service [SaaS]; Platform as a Service [PaaS]; Web site design; web site hosting services; Design and development of software for automation of administrative processes; Services for the digitalization of purchasing, production, sales and marketing, service production, supply chain; data mining; analytical services relating to computer programs; cloud computing; rental of computer software; rental of web servers; computer system analysis; computer system design; web site design consultancy; computer software consultancy; data conversion of computer programs and data [not physical conversion]; hosting computer sites [web sites]; information technology [IT] consultancy; updating of computer software; monitoring of computer systems by remote access; outsource service providers in the field of information technology; technological consultancy.

On 10/03/2016, pilot Hamburg GmbH & Co. KG filed an opposition against the registration. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR based on the earlier EUTM No 12 673 653 for the figurative mark in a yellow colour, of which the second last character is partly grey

filed on 7/03/2014 and registered on 22/07/2014 for the following goods and services as limited on 16/12/2016:

Class 35 – Advertising; Business management; Business administration; Office functions; Production of advertising, commercials and advertising films for radio, video, film, computers, internet websites, television and mobile devices; Online advertising on a computer network; Rental of advertising space, also on the Internet; Publicity material rental; Rental of advertising time on communication media; Market research, for others, including on digital networks; Marketing studies; Opinion polling; Merchandising; Design, development and creation of corporate design, corporate identity and advertising concepts for digital media of all kinds; Business management and organisation consultancy; Compilation, processing and analysis of statistics; Business consulting services in the field of electronic commerce; Advertising agencies, in particular development of textual and graphic designs for advertising slogans, product descriptions and corporate images; Brand consultancy and brand creation services; Consultancy regarding communications planning and the development of communications strategies (public relations); Organising advertising events; Optimisation of internet sites for others, in particular by means of search engine optimisation (SEO), search engine marketing (SEM), search engine advertising (SEA); Affiliate marketing; All of the aforesaid other than for retailing.

Class 42 – Scientific and technological services and research and design relating thereto, in particular services in the field of the scientific recording, analysis and evaluation of advertising campaigns in newspapers, and on radio, television and the internet; Scientific image and brand analysis (market research); Scientific analysis and compilation of information regarding markets and target groups as a basis for media strategies in advertising and products sales; Scientific analysis of the effectiveness of advertising; Industrial analysis and research; Design and development of computer hardware and computer software; Reconstruction of databases; Technical consultancy and support for the use, application and care (maintenance) of computer programs (software); Design services; Product design and product development; Graphic design services; art studio services; Website design; design of websites and computer programs for use in connection with prize draws, competitions and customer incentives; Hosting of digital content, namely, Online diaries and On-line blogs; information, research, advisory and consultation services in relation to all of the aforementioned services.

By decision of 17/01/2019 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods and services, rejected the application in its entirety and ordered the applicant to bear the costs. It gave, in particular, the following reason for its decision:

The contested goods in Class 9 are similar to the opponent’s ‘design and development of computer software’ in Class 42, since they coincide in both the relevant public and the usual producers/providers of the goods and services. The contested services in Class 35 are either included in the broad category or overlap with the services in Class 35 of the earlier mark and are therefore found to be identical. The contested services ‘design and development of computer software; web site design’ are identically contained in both lists of services under Class 42. The other services in this Class are considered similar, highly similar or even identical to the opponent’s services for various reasons.
Visually, the signs coincide in the letter sequence ‘ilot’. They differ in their first letters ‘p’ of the earlier mark and ‘B’ of the contested sign, as well as in the stylization of the earlier mark. They are similar to an average degree. Aurally, the signs coincide in the sound of the last four letters ‘ilot’. The pronunciation differs in the sound of ‘P’ of the earlier mark and ‘B’ of the contested sign. The pronunciation of these consonants is quite similar in Polish and English as they are both produced in the front of the mouth, which results in very close sounds. Given that only the earlier sign has a meaning, the signs are not conceptually similar.
The distinctiveness of the earlier mark must be seen as normal.
Even though the difference is positioned at the beginning of the signs, the visual and aural similarities prevail and lead to a sufficiently similar overall impression of the signs. As a consequence, there is a likelihood of confusion regarding the English- and Polish speaking parts of the public.

On 13/03/2019, the applicant filed an appeal against the contested decision, followed by the statement of grounds received on 17/05/2019. The Board is requested to reject the opposition in its entirety and to order the opponent to bear the costs of the proceedings. The arguments raised may be summarized as follows:

The services of the earlier sign are not similar to any of the goods in Class 9. The finding of some overlapping of the goods or services is nevertheless outweighed by the differences in the marks; trade marks cannot become similar for the sole reason that the goods and services involved have similarities.
The Opposition Division did not consider all the relevant factors to decide whether or not there is a likelihood of confusion. The examination was concentrated on the verbal elements of the opponent’s figurative mark, whereas its overall appearance was practically overlooked.
The relevant consumers are business customers only, as submitted by both parties. Their level of attention will be higher than average since the products are very technical in nature and focused mainly on technical and IT-related functions. The level of attentiveness of consumers should not be underestimated. Even where the goods or services are similar or identical, most consumers, specialist or general, will be capable of differentiating between the conflicting marks as long as there is a distinguishing factor.

The stylization of the earlier sign is not merely decorative. The Office has granted a more extensive right in the word ‘pilot’ by considering it as a word mark rather than looking at the sign as registered in its figurative form .

The second last character, consisting of grey and yellow and being arrow-ended arches with an interlock, also draws the attention from the otherwise yellow logo .
The phonetic overall impression of the signs is clearly different. The first part of the sign is the one that primarily catches the consumer’s attention and will be remembered more clearly than the rest of the sign. The consonants ‘P’ and ‘B’ sound sufficiently different which a reasonably perceptive consumer will have no difficulty in understanding.
The conceptual difference heightens the visual and phonetic differences between the two marks in question and has a significant influence on the differences from an aural point of view.
The differences between the signs in their first parts are clearly perceptible and sufficient to outweigh any similarities and to distinguish between the marks even if some of the goods would be similar, let alone similar to a low degree. As a consequence, there is no likelihood of confusion.

In its observations in reply filed on 25/07/2019, the opponent requests that the Board dismisses the appeal entirely, upholds the decision, rejects the contested application and orders the appellant/applicant to bear the costs. He reiterates that the signs are visually highly similar and that the design elements of the earlier mark are less prominent, since it is registered in a common, simple font. As there also is a high degree of phonetic similarity, the alleged lack of conceptual similarity is irrelevant to the case.

Reasons

The appeal is not well founded. The opposition succeeds on the grounds of Article 8(1)(b) EUTMR for all the contested goods and services.

Article 8(1)(b) EUTMR

Pursuant to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

The opposition is based on an earlier European Union trade mark. The relevant territory therefore comprises all the Member States of the European Union.

Comparison of the goods and services

The goods and services to be compared are:

Contested sign

Earlier mark

According to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification. Therefore, the contested goods in Class 9 can be held similar to the services of the earlier sign if they are of the same nature or have the same purpose, distribution channels, sales outlets, producers, method of use or whether they are in competition with or complementary with each other. The contested goods in Class 9 ‘computer software; computer hardware’ generally and goods in a more specified sense, for instance ‘computer software for use in customer relationship management (CRM)’ and ‘computer software for use in enterprise resource planning (ERP)’ were correctly concluded to be similar to the services of the earlier mark ‘design and development of computer software’. Although the nature of the goods and services differs, they are complementary and their similarity follows from the coinciding distribution channels and producers/providers.

As regards the services in Class 35 and 42, the Board endorses the comparison of the services made by the Opposition Division. No argument was brought forward by the applicant to challenge that comparison.

Comparison of the marks

The comparison of the conflicting marks shall assess the visual, aural or conceptual similarity of the signs in question, based on the overall impression given by the marks and bearing in mind, in particular, their distinctive and dominant elements (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).

The marks to be compared are:

BILOT
Contested sign	Earlier mark

The earlier mark consists of the figurative sign ‘pilot’ written in lowercase bold yellow standard font, of which the letter ’o’ is partially in grey.

The contested word mark consists of the word ‘BILOT’, written in uppercase.

Visually, the signs coincide in their last four letters ‘ilot’. The signs differ in their first letters, respectively the letter ‘B’, written in uppercase and ‘p’ in lowercase. Furthermore, ‘BILOT’ is registered as a plain word whereas ‘pilot’ for the greater part is registered in a yellow colour. The stylization of the earlier mark is not particularly striking and will be perceived as merely decorative (see 15/12/2009, T‑412/08 Trubion, EU:T:2009:507, § 45). Neither of these figurative elements contributes to a high variation in stylization, because of which the word element ‘pilot’ is easily recognisable and legible: one will nevertheless read the word ‘pilot’. They have a minimal impact, and these extra elements do not change the general visual perception of the earlier mark. The signs are therefore visually similar to an at least average degree.

Aurally, the last four letters of the signs ‘ilot’ are pronounced identically, whereas solely the consonants ‘B’ and ‘P’ are not. Taking into account the similarly sounding ‘P’ and ‘B’, solely ‘pilot’ conveying a concept whereas ‘BILOT’ has no meaning, and the similarity to various degrees of the goods and services, the signs are aurally similar to a high degree.

Conceptually, the relevant English speaking public will immediately perceive ‘pilot’ as ‘a person who operates the flying controls of an aircraft’ or ‘a television or radio programme made to test audience reaction with a view to the production of a series’ (extracted from Oxford Dictionary on 07/10/2019 at www.en.oxforddictionaries.com), whereas amongst the same public, ‘BILOT’ will not be associated with any meaning. As a result, the signs are conceptually not similar.

Overall assessment of the likelihood of confusion

According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (Canon, § 18).

For the purpose of that global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

Taking into account the nature of the contested goods and services, the targeted public consists both of business consumers and the public at large that displays an average degree of attention. The goods in Class 9 are relatively economical (29/11/2016, T-105/14, iDrive, EU:T:2016:716, § 34 to 37; 27/03/2014, T 554/12, AAVA MOBILE / JAVA, EU:T:2014:158, § 27).

The inherent distinctiveness of the earlier mark in relation to the relevant goods and services is considered to be normal, since the opponent has not explicitly claimed nor proven enhanced distinctiveness. The meaning of the earlier mark does not have any bearing on the goods and services for which it is registered.

It has to be taken into account that the goods and services are partly identical and partly similar, that the signs are visually and aurally similar to an average to high degree and that the earlier mark has a normal distinctiveness. Therefore, the differences between the signs found in their first letters and the earlier mark’s figurative element are insufficient to safely prevent a likelihood of confusion amongst the relevant public. That the signs are conceptually not similar does not outweigh the average to high degree of similarity in the visual and phonetic aspect.

To conclude, the Board confirms that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for all the contested goods and services.

The appeal shall be dismissed.

Costs

Since the applicant (appellant) is the losing party within the meaning of Article 109(1) EUTMR, it must be ordered to bear the representation costs incurred by the opponent (defendant) in the appeal proceedings. The Opposition Division correctly decided that the applicant (appellant) shall bear the costs in the opposition proceedings.

Fixing of costs

In accordance with Article 109(7) EUTMR and Article 18(1)(c)(iii) EUTMIR, the Board fixes the amount of representation costs to be paid by the applicant (appellant) to the opponent (defendant) with respect to the appeal proceedings at EUR 550. As to the opposition proceedings, the Opposition Division ordered the applicant (appellant) to bear the opposition fee of EUR 350 and the representation costs of the opponent (defendant) which were fixed at EUR 300. The total amount for both proceedings is EUR 1,200.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.
Orders the appellant to bear the costs of the appeal proceedings.
Fixes the total amount of costs to be paid by the appellant to the defendant for the opposition and appeal proceedings at EUR 1,200.

Signed

D. Schennen

Signed

C. Bartos

Signed

E. Fink

Registrar:

Signed

H.Dijkema

28/10/2019, R 564/2019-4, Bilot / pilot

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