OPPOSITION No B 2 829 052

SRTS Europe GmbH, Sternstrasse 5, 40479, Düsseldorf, Germany (opponent), represented by König Szynka Tilmann Von Renesse Patentanwälte Partnerschaft mbB, Mönchenwerther Straße 11, 40545, Düsseldorf, Germany (professional representative)

a g a i n s t

Informática El Corte Inglés S.A., Hermosilla, 112, 28009, Madrid, Spain (applicant), represented by J.M. Toro S.L.P., Viriato, 56 - 1º izda, 28010, Madrid, Spain (professional representative).

On 07/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 829 052 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 894 314 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 894 314  . The opposition is based on, inter alia, German trade mark registration No 302016019520 ‘SRTS’. The opponent invoked Article 8(1)(b) and Article 8(4) 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.

The opposition is based on more than one earlier right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302016019520.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 9: Data processing apparatus; computers; computer hardware; computer software; computer software for mobile terminals, in particular, but not exclusively, apps; cloud-based software; computer software in the fields of transport and storage; computer software in the fields of shipping, freight and logistics; software for warehouse management; computer software for customs clearance and foreign trade; machine readable data carriers of all types with programs installed.

Class 42: Design, development and rental of computer hardware; design, development, creation, customisation, expansion, implementation, installation, configuration, conversion, updating and maintenance of software and computer software; providing of computer programs in data networks, in particular, but not exclusively, online providing of non-downloadable software; providing software as a service; cloud computing; application service providing; technical consultancy and technological support services in connection with the application of software in support of business and logistics processes; database-supported storage of electronic documents in the fields of transportation and storage.

The contested goods and services are the following:

Class 9: Magnetic data carriers, recording discs; software; computer interface apparatus.

Class 38: Telecommunication services.

Class 42: Science and technology services; IT services; design services; testing, authentication and quality control.

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 term ‘in particular’, used in the opponent’s list of goods and services, indicates 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 (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 software includes, as a broader category the earlier cloud-based software. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested computer interface apparatus are included in the broad category of the earlier computer hardware. Therefore, they are identical.

The contested magnetic data carriers; recording discs are similar to a high degree to the earlier computers because they coincide in distribution channels, relevant public and producer. Also, these goods share a certain degree of complementarity.

Contested services in Class 38

The contested telecommunication services are similar to the earlier computer software because they coincide in the following criteria: they have the same purpose and they are complementary. They also coincide in relevant public and distribution channels.

Contested services in Class 42

The contested IT services includes, as a broader category the earlier cloud computing. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested design services includes, as a broader category the earlier design, development and rental of computer hardware. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested science and technology services; testing, authentication and quality control are similar to the opponent’s design, development, creation, customisation, expansion, implementation, installation, configuration, conversion, updating and maintenance of software and computer software because share distribution channels, relevant public and provider.

b) 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 to various degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to vary from average to high depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

SRTS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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. It consists of the four letters ‘Srtm’ depicted using red characters, the first of which is a capital letter, followed by the much smaller word ‘node’, depicted using red lower case letters. Above these verbal elements, it lies a figurative element consisting of sixteen green circles of various sizes displayed in line which form a sort of rhombus.

The earlier word mark ‘SRTS’ has no meaning for the relevant public and is, therefore, distinctive.

The same is valid for the letters ‘Srtm’ and the word ‘node’ of the contested sign.

Both the figurative element and the word element ‘Srtm’ of the contested sign are the dominant elements as they are together the most eye-catching.

However, as regards the contested sign’s figurative element, account must be taken of the fact that 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).

Visually, the signs coincide in the letters ‘SRT’ of the only and distinctive element of the earlier sign and of the co-dominant and distinctive element of the contested sign, while they differ in the last letters of the aforementioned elements, respectively ‘S’ and ‘m’. Also, the signs differ in the secondary element ‘node’ and in the figurative element of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SRT’ of the only and distinctive element of the earlier sign, namely ‘SRTS’ and of the co-dominant and distinctive element of the contested sign, namely ‘Srtm’. The pronunciation differs in the last letters of the aforementioned elements, respectively ‘S’ and ‘m’, and in the secondary element ‘node’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services in classes 9 and 42 covered by the earlier right and the goods in classes 9, 38 and 42 covered by the contested application have been found partly identical and partly similar to varying degrees. The signs are similar to an average degree both from a visual and aural perspective. The earlier mark ‘SRTS’ is almost fully incorporated within the contested sign’s co-dominant and distinctive element ‘Srtm’ and the slight difference in their endings could easily be overlooked by consumers.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Also, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, 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).

As the goods and services in classes 9, 38 and 42 are identical and similar to varying degrees and in view of the coincidence in the elements ‘SRTS’ and ‘Srtm’ and the presence of only a few differentiating elements, which in the case of the contested sign plays all a secondary role due to their position and nature, a likelihood of confusion exists.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302016019520. It follows that the contested trade mark must be rejected for all the contested goods and services.

Contrarily to the applicant’s view, the opponent is not obliged to adduce further facts, evidence and arguments in order to substantiate its opposition if, like in this case, it has already provided the Office with all the necessary information and documents upon filing the notice of opposition.

As the earlier German trade mark registration No 302016019520 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Riccardo RAPONI

Andrea VALISA

Francesca CANGERI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.