OPPOSITION No B 2 925 330

NT-ware Systemprogrammierungs GmbH, Niedersachsenstr. 6, 49186 Bad Iburg, Germany (opponent), represented by Busse & Busse Patent- und Rechtsanwälte Partnerschaft mbB, Grosshandelsring 6, 49084 Osnabrück, Germany (professional representative)

a g a i n s t

Ditmer A/S, Søren Frichs Vej 44D, 8230 Åbyhøj, Denmark (applicant).

On 14/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 925 330 is upheld for all the contested goods and services, namely all the goods and services in Classes 9 and 42.

2. European Union trade mark application No 16 661 506 is rejected for all the contested goods and services. It may proceed for the remaining uncontested services in Class 35.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 661 506 for the word mark ‘UnityFlow’, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 9 344 656 for the word mark ‘uniFLOW’. 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 and services on which the opposition is based are the following:

Class 9: Data-processing equipment and computers; computer programmes (software).

Class 42: Design, development, care, installation, repair and adaptation of computer programs.

The contested goods and services are the following:

Class 9: Software; workflow software; integrated software packages; computer programmes for data processing; computer programs [downloadable software]; process controlling software; computer software, recorded; unified communications software; table representation software; software for online messaging; website development software; workflow applications; information technology and audiovisual equipment.

Class 42: Computer software design; software development; software engineering; project studies relating to software; maintenance of computer software; software creation; computer programming and software design; custom design of software packages; software design and development; updating of software data bases; consultancy in the field of software design; hosting services and software as a service and rental of software; software as a service [SaaS]; maintenance of software for communication systems; development of software for communication systems; rental of software for data processing; updating of software for data processing; consultancy relating to software maintenance; installation of internet access software; programming of software for database management; rental of database management software; consultancy relating to the updating of software; software engineering services for data processing programs; programming of software for internet platforms; consultancy relating to software design and development; design and development of software for database management; programming of software for website development; rental of software for website development; rental of software for importing and managing data; programming of software for importing and managing data; design and development of software for inventory management; IT services; data duplication and conversion services, data coding services; IT consultancy, advisory and information services; IT security, protection and restoration; rental of computer hardware and facilities; computer hardware development; software development, programming and implementation.

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; workflow software; integrated software packages; computer programmes for data processing; computer programs [downloadable software]; process controlling software; computer software, recorded; unified communications software; table representation software; software for online messaging; website development software; workflow applications are all various types of software and computer programs that are included in the broader category of the opponent’s computer programmes (software). Therefore, they are identical.

The contested information technology and audiovisual equipment cannot be clearly separated from the broad category of the opponent’s data-processing equipment and computers. As these categories of goods overlap, they are considered identical.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s design, development, care, installation, repair and adaptation of computer programs. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested computer software design; software creation; computer programming and software design; custom design of software packages; programming of software for database management; programming of software for website development; programming of software for importing and managing data; programming of software for internet platforms are included in the broad category of the opponent’s design of computer programs. Therefore, they are identical.

The contested software development; development of software for communication systems are included in the broad category of the opponent’s development of computer programs. Therefore, they are identical.

The contested installation of internet access software is included in the broad category of the opponent’s installation of computer programs. Therefore, they are identical.

The contested software design and development; design and development of software for database management; design and development of software for inventory management are included in the broad category of the opponent’s design and development of computer programs. Therefore, they are identical.

The contested maintenance of computer software; updating of software data bases; maintenance of software for communication systems; updating of software for data processing are included in the broad, or overlap with, the broad category of the opponent’s care, repair and adaptation of computer programs. Therefore, they are identical.

The contested software engineering; project studies relating to software; software as a service [SaaS]; software engineering services for data processing programs; software development, programming and implementation cannot be clearly separated from the broad categories of the opponent’s design, development, care, installation, repair and adaptation of computer programs. As these categories of services overlap considerably, they are considered identical.

The contested rental of software for data processing; rental of database management software; rental of software for website development; rental of software for importing and managing data; rental of computer hardware and facilities are similar to the opponent’s design, development, and adaptation of computer programs. These services usually have the same provider. They target the same public and are distributed through the same channels.

The contested consultancy in the field of software design; consultancy relating to software maintenance; consultancy relating to the updating of software; consultancy relating to software design and development; IT consultancy, advisory and information services are similar to the opponent’s design, development, care, installation, repair and adaptation of computer programs. These services have the same nature, methods of use and target the same public. They usually have the same provider as the companies that provide design, development and maintenance of computer programs often provide also related consultancy, advisory and information services. In addition, they are often complementary.

The contested data duplication and conversion services, data coding services; IT security, protection and restoration are similar to the opponent’s care, installation, repair and adaptation of computer programs. These services usually have the same provider. They target the same public and are distributed through the same channels.

The contested computer hardware development is similar to the opponent’s design, development of computer programs. These services usually have the same provider. They target the same public and are distributed through the same channels.

The contested hosting services and software as a service and rental of software are at least similar to the opponent’s design, development, and adaptation of computer programs. These services have the same provider, target the same public and are distributed through the same channels.

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 identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

uniFLOW	UnityFlow UnityFlow
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 trade marks under comparison are meaningful in those countries where English is understood, which, in turn, influences the perception of the signs in those countries and assessment of a likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, namely the public in the United Kingdom, Ireland and Malta.

The earlier trade mark is a word mark composed of a single word, ‘uniFLOW’, and the contested trade mark is a word mark composed of a single word, ‘UnityFlow’. Both of these words, as a whole, do not exist in English. It has to be recalled that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). However, the Court has also held that the consumer, when perceiving a word sign, will break it down into word elements which, for him or her, have a concrete meaning or which resemble words known to him/her (11/11/2009, T‑277/08, Citracal, EU:T:2009:433, § 55). Bearing in mind the above, in the present case it is likely that the English-speaking public will break the signs down into the two verbal elements which are meaningful to that public, namely ‘UNI’ and ‘FLOW’ in case of the earlier sign and ‘UNITY’ and ‘FLOW’ in case of the contested sign.

The prefix ‘UNI-‘ in the earlier sign will be understood by the relevant public in its meaning of ‘one, single’ (information extracted from Merriam Webster dictionary on 11/06/2018 at www.merriam-webster.com/dictionary/uni-), which is distinctive for the goods and services at issue. The stem ‘UNITY’ in the contested sign may be understood by the relevant public, inter alia, in its meanings of ‘the quality or state of not being multiple: oneness’ or ‘the quality or state of being made one: unification’ (information extracted from Merriam Webster dictionary on 11/06/2018 at www.merriam-webster.com/dictionary/unity), which is distinctive for the goods and services at issue.

The coinciding word ‘FLOW’ may be understood by the relevant public in one of its meanings, ‘to issue or move in a stream’, ‘to proceed smoothly and readily’, ‘to derive from a source’ (information extracted from Merriam Webster dictionary on 11/06/2018 at www.merriam-webster.com/dictionary/flow). However, the word ‘FLOW’ is often used in computing in relation to data, for example ‘data-flow’, meaning ‘the route between origin, via nodes, to a destination taken by a packet of data’, ‘the transfer of data between the components of a computer’ or ‘in computers, the path of data from source document to data entry to processing to final reports. Data changes format and sequence (within a file) as it moves from program to program’ (information extracted from Your Dictionary on 11/06/2018 at www.yourdictionary.com/data-flow). As this meaning is allusive of certain characteristics of the goods and services in Classes 9 and 42 related with software, its design, development, care, installation, repair and adaptation as well as related rental and consultation services; distinctiveness of the word ‘FLOW’ is below average.

As both signs are word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters, or in a combination thereof; furthermore, for the same reasons, they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Visually and aurally, the signs coincide in the letter sequence, UNI**FLOW, constituting the entire earlier word mark, ‘UNIFLOW’, and seven out of nine letters of the contested work mark, ‘UNITYFLOW’. The similarities are located in the beginnings of the signs, where consumers normally focus their attention, and in their final parts. The coinciding parts will be pronounced identically. The contested sign differs, including its pronunciation, in its fourth and fifth letters, namely the letters ‘TY’, which have no counterpart in the earlier sign. However, this difference is located in the middle section of the contested sign which is more likely to be overlooked by the relevant public.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with an identical meaning of the word ‘FLOW’. In addition, the public may associate the prefix ‘UNI’ in the earlier sign and the word ‘UNITY’ in the contested sign will similar meanings, as explained above. Overall, the signs are conceptually at least highly similar.

As the signs have been found similar 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 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, despite the presence of an element which distinctiveness is below average, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are identical, similar and at least similar. The signs are visually and aurally similar to a high degree. As explained above in section c) of this decision, the signs are conceptually at least highly similar. The earlier mark as a whole has a normal degree of distinctiveness the relevant public.

The relevant public is the public at large and business customers displaying average to high degree of attention.

In the present case both marks are word marks, therefore the use of upper and lower case characters is irrelevant for the assessment of a likelihood of confusion. The only element of the earlier mark, ‘UNIFLOW’, is entirely incorporated in the contested sign, ‘UNITYFLOW’, which differs only in its two additional letters, ‘TY’, located in fourth and fifth positions within this sign. Importantly, the signs coincide in identical and distinctive element ‘UNI’, located at the beginning of the signs. It is settled case-law that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In addition, the signs have identical final sections composed of the word ‘FLOW’. Even though distinctiveness of this element in relation to the goods and services at issue is below average; it is identically incorporated at the end of both signs.

The only differing letters, ‘TY’, are located in the middle section of the contested mark which is more likely to be overlooked by average consumers who 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). It should also be recalled 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). It is all the more likely considering that the element ‘UNI’ in the earlier sign and ‘UNITY’ in the contested sign, where this difference is located, share certain level of conceptual similarity.

Consequently, the above-identified differences cannot overcome the overall impressions produced by the marks, namely that they are highly similar.

Considering all the above, the Opposition Division considers that there is a likelihood of confusion on the part of the English-speaking part of the public, namely the public in the United Kingdom, Ireland and Malta, both the public at large and business customers. In view of the similarities a likelihood of confusion applies to the public displaying average or high degree of attention. 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 9 344 656. It follows that the contested trade mark must be rejected for all the contested goods and services, namely all the goods and services in Classes 9 and 42. It may proceed for the remaining uncontested services in Class 35.

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

Liliya YORDANOVA

Jakub MROZOWSKI

Monika CISZEWSKA

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.