OPPOSITION No B 2 958 620

Cognity S.A., 42 Kifissias Avenue, 15125 Maroussi, Athens, Greece (opponent)

a g a i n s t

Cognigy, Speditionstrasse 1, 40221 Düsseldorf, Germany (applicant), represented by Thomas Bausch, Weg zur Schanze 35, 58313 Herdecke, Germany (professional representative).

On 30/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 958 620 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 770 505 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods and services of European Union trade mark application No 16 770 505 ‘COGNIGY’, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 13 912 159 . The opponent invoked Article 8(1)(a) and (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 services on which the opposition is based are, inter alia, the following:

Class 38: Telecommunication services.

Class 42: IT services; computer technology consultancy; telecommunications technology consultancy; professional consultancy relating to technology; providing science technology information; engineering consultancy relating to computer programming; technological services and design relating thereto; technological services and research relating thereto; creation of GPS maps; design and development of electronic data security systems; research and development services; services for the provision of technological information; advisory services relating to technological research; technical consultancy services relating to computer programming; technological planning services; technological analysis services; none of the aforementioned services in the fields of or in relation to creation of software for the surveillance of persons and property, creation of software for the processing of alarms and security events.

The contested goods and services are the following:

Class 9: Adaptive software; voice recognisers; speech recognition apparatus; speech recognition software; speech analytics software; vocoders; data processing software for word processing; software for processing images, graphics and text; voice recognition software.

Class 42: Development of software for communication systems; updating and adapting of computer programs according to user requirements; design, maintenance, rental and updating of computer software.

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 voice recognisers; speech recognition apparatus; vocoders are all types of apparatus for the recording, transmission or reproduction of sound or images and are often used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. The opponent’s telecommunication services in Class 38 allow people to communicate with one another by remote means. Consumers use apparatus for recording, transmission or reproduction of sound or images when they want to communicate with others. Therefore, the contested goods are similar to the opponent’s services in Class 38 because they are complementary and, even though their nature is different, their purposes and distribution channels are the same.

The contested adaptive software; speech recognition software; speech analytics software; data processing software for word processing; software for processing images, graphics and text; voice recognition software are similar to the opponent’s IT services in Class 42, as they usually have the same producers and relevant public. Furthermore, they are complementary.

Contested services in Class 42

The contested development of software for communication systems; updating and adapting of computer programs according to user requirements; design, maintenance, rental and updating of computer software are included in the broad category of the opponent’s IT services. 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.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

	COGNIGY
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 earlier mark is a figurative mark, composed of the verbal element ‘cognity’, written in black apart from the letters ‘it’, which are orange, and an orange asterisk to the left of the word ‘cognity’.

The contested mark is a word mark, ‘COGNIGY.

Neither the element ‘COGNITY’ of the earlier mark nor ‘COGNIGY’ of the contested sign has a meaning for the relevant public; these elements are, therefore, distinctive.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘COGNI’, placed at the beginning of both marks, as well in their final letters, ‘Y’. 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.

The signs differ in their sixth letters, ‘T’ in the earlier mark and ‘G’ in the contested mark, as well as in the figurative element and the colours of the earlier mark. However, 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛COGNI*Y’, present identically in the same positions in both signs. The pronunciation differs in the sound of their sixth letters, T’ in the earlier mark and ‘G’ in the contested mark. The marks have the same structure and rhythm, the coinciding letters being placed in the same positions in the marks.

Therefore, the signs are aurally highly similar.

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.

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.

5. Global assessment, other arguments and conclusion

The contested goods are similar and the contested services are identical to the opponent’s services. They are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

The marks are visually similar to an average degree and aurally highly similar, as they have six out of seven letters in common, placed in the same positions. Their verbal elements have the same structure and rhythm. The marks’ verbal elements differ in only one letter, and this difference is not obvious. Moreover, the differentiating figurative element of the earlier mark will have less impact on the consumer than the verbal component.

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). 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).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 912 159. It follows that the contested trade mark must be rejected for all the contested goods and services.

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(1)(a) 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Michaela SIMANDLOVA

Francesca DRAGOSTIN

Rasa BARAKAUSKIENE

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.