OPPOSITION No B 3 070 856

Information Builders, Inc., 2 Penn Plaza, 10121-2898 New York, United States of America (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, M3 2JA Manchester, United Kingdom (professional representative)

a g a i n s t

Mitsui Chemicals Inc., 5-2, Higashi-Shimbashi 1-chome, Minato-ku, 105-7122 Tokyo, Japan (applicant), represented by Staeger & Sperling Partg mbB, Sonnenstr. 19, 80331 Munich, Germany (professional representative).

On 18/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 856 is upheld for all the contested goods, namely:

Class 9: Database management software; computer software for accessing, browsing and searching online databases; data synchronization software; software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer application software for use in connection with configuring and controlling wearable computer hardware and wearable computer peripherals; computer software for monitoring, processing, displaying, storing and transmitting data relating to a user’s physical activity; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program.

2. European Union trade mark application No 16 459 703 is rejected for all the contested goods. It may proceed for the remaining (non-contested) goods in Class 9.

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

REASONS

The opponent filed an opposition against part of the goods of European Union trade mark application No 16 459 703, for the word mark ‘TouchFocus’. The opposition is based on European Union trade mark registration No 13 662 531, for the word mark ‘FOCUS’. 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

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

Class 9: Computer software; computer programs; downloadable electronic publications and manuals relating to computer software and computer programming.

The contested goods are the following:

Class 9: Database management software; computer software for accessing, browsing and searching online databases; data synchronization software; software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer application software for use in connection with configuring and controlling wearable computer hardware and wearable computer peripherals; computer software for monitoring, processing, displaying, storing and transmitting data relating to a user’s physical activity; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program.

The contested goods are all included in the broad category of, or overlap with, the opponent’s computer software, as they all refer to specific types of software. Therefore, they are identical.

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.

The goods found to be identical target both the public at large and the professional public. The degree of attention will vary from average to high, depending on the specialised nature and sophistication of the goods and services, the frequency of purchase and their price.

3. The signs and distinctiveness of the earlier mark

FOCUS	TouchFocus
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal components of the signs are meaningful for the English-speaking part of the public in the relevant territory. In order to take into account the semantic content of these elements in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in Ireland, Malta and the United Kingdom, as well as consumers who have sufficient knowledge of English as a foreign language.

Although the contested sign consists of a single verbal element, it will be broken down into the components ‘Touch’ and ‘Focus’ – not only because both words are meaningful for the relevant public, but also due to the irregular capitalisation used. When a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account.

The verbal component common to both signs, ‘FOCUS’/‘Focus’, will be associated by the relevant public with the English term meaning, inter alia, ‘a point upon which attention, activity, etc., is directed or concentrated’. The Opposition Division does not concur with the applicant’s view that this element has limited distinctiveness, given that its meaning is unclear in relation to the relevant goods at issue. The goods are not, for instance, optical measuring instruments or photographic devices. Since the link cannot be held direct or immediate, the element ‘focus’ (in both signs) is considered distinctive to an average degree for the relevant goods. This is in line with recent decisions of the Boards of Appeal (13/06/2019, R 2311/2018‑2, Focus switch / Focus et al. § 41; 17/01/2020, R 655/2019‑2, Scalefocus (fig.) / Focus et al. § 33). Consequently, as the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se, that is to say, average.

The verbal component ‘Touch’ of the contested sign will be associated by the relevant public with the English term meaning, inter alia, the ‘act of touching someone or something’. Although there are certain types of software that are designed around the use of touch to make devices operate (e.g. editing software of smartphones apps), which could impair the distinctive character of this element, it is considered that, given the special nature of the applicant’s goods (e.g. database management software; computer software for accessing, browsing and searching online databases; data synchronization software), the connection with this meaning/function for most of these goods is unclear and ambiguous. In any case, for the purposes of these proceedings, the distinctive character of this element is deemed average, which is the best light in which the applicant’s case can be considered, and does not have an impact on the final outcome.

As held by the General Court and confirmed by the Court, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (04/05/2005, T‑22/04, Westlife, EU:T:2005:160, § 40; 21/01/2015, T‑685/13, BLUECO, EU:T:2015:38, § 33; 25/09/2015, T‑684/13, BLUECO / BLUECAR, EU:T:2015:699, § 49). The Courts have also consistently held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 54).

Visually and aurally, the signs coincide in the word / sound of the letters ‛Focus’, which is distinctive, and is the entirety of the earlier mark and the second element in the contested sign.

The signs differ in the word / sound of the letters ‛Touch’, present at the beginning of the contested sign, deemed distinctive, and that has no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide in the distinctive concept of ‘focus’ and differ only in the additional concept of ‘Touch’ in the earlier mark. However, this element does not significantly alter the common concept because the relevant public will probably perceive the meaning of the contested sign, ‘TouchFocus’, as a mere combination of words, rather than a precise grammatical or conceptual unit.

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

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

4. Global assessment, other arguments and conclusion

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).

The goods are identical, and they target the public at large and the professional public, whose degree of attention may vary from average to high. However, account is taken of the fact that even consumers who pay a higher 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). The distinctiveness of the earlier mark is average.

The signs are visually, aurally and conceptually similar to an average degree, to the extent that they include, and refer to, the word ‘Focus’, which is distinctive. The only difference between the signs is the additional component ‘Touch’ of the earlier mark, which, despite also being distinctive and placed at the start of the sign, cannot outweigh the commonalities between the signs and exclude a likelihood of confusion.

Additionally, although the relevant public may detect some differences between the signs, it is likely that consumers will perceive the differing elements as different versions of the marks (e.g. according to a given product line), given the partial identity between the signs on account of the word ‘Focus’. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours or by adding verbal or figurative elements, to denote a new product. Therefore, the likelihood that the public may associate the signs with each other is very real.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 662 531. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Michele M. BENEDETTI-ALOISI

Birgit FILTENBORG

Aldo BLASI

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.