OPPOSITION No B 3 008 888

Konrad-Zuse-Zentrum für Informationstechnik Berlin, Takustraße 7, 14195 Berlin, Germany (opponent), represented by FPS Partnerschaft von Rechtsanwälten mbB, Kurfürstendamm 220, 10719 Berlin, Germany (professional representative)

a g a i n s t

Poldem, Spółka z ograniczoną odpowiedzialnością, ul. Pabianicka 184/186, 93-402 Łódź, Poland (applicant), represented by Santarelli, 49 avenue des Champs Elysées, 75008 Paris, France (professional representative).

On 25/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 008 888 is upheld for all the contested goods, namely:

Class 9: Computer software and software applications for configuring furniture by modifying the dimensions, coverings, colours and accessories thereof.

2. European Union trade mark application No 17 192 816 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 192 816 for the figurative mark , namely against all the goods in Class 9. The opposition is based on, inter alia, opponent’s German trade mark registration No 30 2016 008 161 for the word mark ‘SoPLEX’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 2016 008 161.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Computer programs for modeling and solving discrete-continuous-stochastic optimization problems; computer programs for modeling and solving linear optimization problems; software for mathematical research services; software in the field of applied mathematics; Software for mathematical, applied research.

The contested goods are the following:

Class 9: Computer software and software applications for configuring furniture by modifying the dimensions, coverings, colours and accessories thereof.

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.

Software or computer software is composed of programs, routines and symbolic languages that control the functioning of the hardware and direct its operation.

The contested computer software includes, as a broader category, or overlaps with the opponent’s software for mathematical research services. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

An application is any program, or group of programs, that is designed for the end user. Software applications (also called end-user programs) include such things as database programs, word processors, web browsers and spreadsheets.

Therefore, the remaining contested software applications for configuring furniture by modifying the dimensions, coverings, colours and accessories thereof have relevant points in common with the opponent’s computer programs for modeling and solving linear optimization problems as they have a similar nature, and may coincide in producer, end user and distribution channels. Consequently, they are similar.

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 found to be identical or similar are directed at the public at large and at professionals, in particular, experts in mathematics and computer programming with specific professional knowledge or expertise.

The degree of attention will be average in relation to the contested software applications for configuring furniture by modifying the dimensions, coverings, colours and accessories thereof. However, in relation to the opponent’s goods such as software in the field of applied mathematics the relevant public will display a higher degree of attention due to their specialised nature.

The applicant argues that the opponent’s goods refer to very specialized kinds of software and, therefore, they are very different from the applicant’s ones.

In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

SoPLEX
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 earlier mark is a word mark ‘SoPLEX’. In the word marks, it is the word as such that is protected and not its written form. Additionally, being a word mark, the earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark composed of the stylised verbal element ‘SooFlex’. A part of the relevant public in the relevant territory may see the infinity symbol following the first letter ‘S’. However, since the beginning and the end of the sign is composed of the letter ‘S’ and the sequence of letters ‘Flex’ it cannot be excluded that the substantial part of the public will recognize the stylised double letter ‘oo’ between those elements. The same seems to be confirmed also by the applicant in its observations when admitting that the signs coincide in their first letters ‘So’.

In the present case, the relevant public will be able to identify two elements in the signs, ‘So’ and ‘Plex’ in the earlier mark and ‘Soo’ and ‘Flex’ in the contested sign because of the meanings that these elements, when put together, may have for this relevant public.

The initial elements ‘So’ in the earlier mark and, used in a colloquial speech, ‘Soo’ in the contested sign will be recognized by the German public as referring, inter alia, ‘to such a great extent’. With this meaning, these elements are degree adverbs that modify adjectives and other adverbs, for instance ‘so kalt’ (‘so cold’) or ‘so einfach’ (‘so easy’).

The subsequent element ‘Plex’ of the earlier mark will be associated by the relevant public with the German words including the element ‘Plex’, such as the terms ‘Plexiglass’, ‘Plexiform’ making a reference to a resistant, durable, long-lasting material (information extracted from Duden Dictionary on 16/01/2019 on https://www.duden.de/suchen/dudenonline/Plex). The applicant suggests that the element ‘Plex’ may be seen by a part of the relevant public, in particular, experts in mathematics and computer programming, as a reference to the ‘Simplex algorithm’ (or ‘simplex method’), known to scientists in the field of mathematics as meaning a popular algorithm for linear programming. However, as mentioned above, the examination of the likelihood of confusion, in the present case, will proceed on the perception of the general public.

As far as the element ‘Flex’ of the contested sign is concerned, the relevant public in the relevant territory will make a reference to an adjective ‘Flexibel’ meaning flexible, elastic or adaptable to changing circumstances, agile in decisions ( information extracted from Duden Dictionary on 16/01/2019 on https://www.duden.de/suchen/dudenonline/Flex).

Taking into account the above-mentioned and the goods in question, the distinctiveness of the elements ‘Plex’ of the earlier mark and ‘Flex’ of the contested sign will be weak in relation to them because they may refer either to their long-lasting/resistant or adjustable nature of the relevant goods.

In summary, since the elements ‘So and ‘Soo’ do not convey any concrete concept as they are degree adverbs, both signs in their entirety ‘SoPlex’ and ‘SooFlex’ will be associated with the above-mentioned characteristics of the goods in question and, therefore, they convey concepts that are weak for them.

As regards the figurative elements present in the contested sign (stylised script), 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; 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, in view of the composition of the contested sign, the verbal element ‘Sooflex’ is the one that will be used to refer to the sign.

The Opposition Division notes also that the abovementioned figurative elements of the contested sign play rather a decorative function in the sign and, accordingly, are less distinctive than the verbal element ‘SooFlex’.

The contested sign has no element which could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the majority of their letters and sounds ‘S-O-*--*-L-E-X’. The applicant strongly argues that the difference between the letter ‘P’, which is ‘short and brutal’, and the letter ‘F’, which is ‘longer and smoother’, is remarkable. Indeed, the Opposition Division notes that the signs differ in the second letter ‘O’ of the contested sign and the letters ‘P’ versus ‘F’, which are present in the middle of the signs. However, the impact of these differences will be limited due to the fact that they either constitute a double letter (‘O’ in the contested sign) or are followed by the same sequence of letters ‘L-E-X’. They sigs also differ in the figurative aspects of the contested sign (only visually), which are, however, less relevant than the verbal element ‘SooFlex’, as mentioned above. The relevant public will see in this element the main indicator of commercial origin of the contested sign for the relevant goods, even if this element is weak, because there is no other verbal element in the sign, and the figurative elements play a secondary role, as explained above.

Consequently, the degree of visual and aural similarity between the signs must, therefore, be considered average.

As regards the conceptual comparison, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As mentioned above, the general public will associate the elements ‘Plex’ with something resistant/durable and ‘Flex’, with something flexible, adaptable to changing circumstances. The expressions ‘SoPlex’ and ‘SooFlex’ will, therefore, convey remotely similar concepts to the extent that they refer to certain characteristics of the goods in terms of their durability, including their adjustable/flexible nature. This is relevant for the assessment of the likelihood of confusion, even if these concepts are weak, because there are no other concepts present in the signs. Consequently, there is a remote conceptual similarity between the signs for the general public since, as explained above, the elements ‘So’ and ‘Soo’ alone (they are only degree adverbs, as mentioned above), do not convey any clear concept.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the relevant goods, as explained above.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods target the general public and a professional public and the degree of attention varies from average to high. In this regard, it must be remembered, however, 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).

Although the distinctive character of earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03 ‘Flexi Air’, EU:T:2005:102, § 61).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity and similarity of the goods covered by the respective marks, combined with a visual and phonetic similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (12/01/2006, T-147/03 ‘Quantum’, EU:T:2006:10, §110).

The contested goods have been found partly identical and partly similar to the ones covered by the earlier mark.

As analysed above, the signs under dispute contain the majority of their letters in common and they differ only in the letters placed in the positions to which the relevant public will not attach much attention. They convey similar concepts for the general public, although only remotely, as explained above. The differing figurative elements of the contested sign play merely a decorative function within the sign. The relevant consumers will indeed perceive the verbal element ‘SooFlex’ as a badge of origin for the relevant goods of the contested sign.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

Considering all the above and, in particular, the interdependence principle, the Opposition Division is of the opinion that, in the present case, there is a likelihood of confusion on the part of the general public for all the goods found to be identical and similar. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public, namely the professional public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2016 008 161.

It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier German trade mark registration No 30 2016 008 161 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Carlos MATEO PÉREZ

Monika CISZEWSKA

Marta GARCIA COLLADO

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.