OPPOSITION No B 3 029 561

Serif (Europe) Limited, Unit 12 Wilford Industrial Estate, Nottingham NG11 7EP, United Kingdom (opponent), represented by James Love Legal Limited, 3 Sceptre House, Hornbeam Square North, Harrogate HG2 8PB, United Kingdom (professional representative)

a g a i n s t

Affinity S.A., Avenida António Augusto de Aguiar, 130, 2º, 1050-020 Lisboa, Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14, 1249-103

Lisboa, Portugal (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 561 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software [recorded]; Computer programs for accessing and using the Internet; Computer programs for webpage design; Application software; Computer software for document creation, production, conversion, recording, indexing, archiving, printing, displaying, viewing, publishing, transmission, encryption, management, typography and distribution; Computer software for database management; Computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information; Hand-held computer system consisting of operating systems, network software and utility programs.

Class 42: Technological consultation services; Computer software consultancy; Consultancy in the field of computers; Computer technology consultancy; Software development; Development of computer programs; Maintenance of software; Maintenance and updating of computer software; Maintenance of software; Installation, repair and maintenance of computer software; Outsource service providers in the field of information technology; Information technology support services; Development of computer systems; Consultancy in the field of computer system integration; Consultancy in the field of computer system analysis; IT project management; Conducting technical project studies; Engineering project management services; Technical project studies in the field of computer hardware and software.

2. European Union trade mark application No 17 211 806 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 211 806 . The opposition is based on European Union trade mark registration No 12 117 792 for the word mark ‘AFFINITY’. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

a) The goods and services

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

Class 9: Computer software in the fields of multimedia content and scrapbooking; software to enable uploading, posting, blogging and sharing of communication or information; computer software relating to social networking and for allowing data retrieval, upload, access and management; computer software that enables users to create and/or share multimedia content with third parties via a global computer network; computer programs in the fields of desktop publishing, word processing, printing, graphics, images, fonts, font management, typesetting, document management and manipulation, presentation delivery, image editing, media and photo management, drawing, animation, graphics, website design, digital video and audio editing; none of the aforesaid goods relating to the dating agency industry or to security solutions.

The contested goods and services are the following:

Class 9: Computer software [recorded]; Computer programs for accessing and using the Internet; Computer programs for webpage design; Application software; Computer software for document creation, production, conversion, recording, indexing, archiving, printing, displaying, viewing, publishing, transmission, encryption, management, typography and distribution; Computer software for database management; Computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information; Hand-held computer system consisting of operating systems, network software and utility programs.

Class 35: Outsourcing services (business assistence); Outsourcing services in the field of business operations; Outsource service provider in the field of customer relationship management; Outsourcing services in the nature of arranging service contracts for others; Commercial information services; Data processing; Information services relating to business matters.

Class 42: Technological consultation services; Computer software consultancy; Consultancy in the field of computers; Computer technology consultancy; Software development; Development of computer programs; Maintenance of software; Maintenance and updating of computer software; Maintenance of software; Installation, repair and maintenance of computer software; Outsource service providers in the field of information technology; Information technology support services; Development of computer systems; Consultancy in the field of computer system integration; Consultancy in the field of computer system analysis; IT project management; Conducting technical project studies; Engineering project management services; Technical project studies in the field of computer hardware and 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 computer software [recorded]; computer programs for accessing and using the internet; computer programs for webpage design; application software; computer software for document creation, production, conversion, recording, indexing, archiving, printing, displaying, viewing, publishing, transmission, encryption, management, typography and distribution; computer software for database management; computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information; hand-held computer system consisting of operating systems, network software and utility programs are if not identical, at least similar to the opponent’s computer software in the fields of multimedia content and scrapbooking; none of the aforesaid goods relating to the dating agency industry or to security solutions, as the opponent’s goods, if they are not included in, or overlap with, the contested goods, at least they coincide in the same targeted public, distribution channels and commercial origin.

Contested services in Class 35

All the contested services in Class 35 are intended to support and assist businesses in their day-to-day operations. On the other hand the opponent’s goods consist of different types of software. These goods and services have different natures, purposes and methods of use. They are not complementary or in competition with each other. They are not provided by the same undertakings, they are distributed through different channels and they target different relevant publics. Therefore, the Opposition Division concludes that the goods and services under comparison are dissimilar.

Contested services in Class 42

The contested technological consultation services; computer software consultancy; consultancy in the field of computers; computer technology consultancy; software development; development of computer programs; maintenance of software; maintenance and updating of computer software; maintenance of software; installation, repair and maintenance of computer software; outsource service providers in the field of information technology; information technology support services; development of computer systems; consultancy in the field of computer system integration; consultancy in the field of computer system analysis; IT project management; conducting technical project studies; engineering project management services; technical project studies in the field of computer hardware and software are at least similar to a low degree to the opponent’s computer software in the fields of multimedia content and scrapbooking; none of the aforesaid goods relating to the dating agency industry or to security solutions. These goods and services are closely linked as manufacturers of software will also commonly provide software-related services (as a means of keeping the software updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, at least some of them are complementary or have the same distribution channels.

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 at least similar to varying degrees are directed at the public at large and at 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.

c) The signs

AFFINITY
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 common element ‘AFFINITY’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as that in the United Kingdom, Ireland and Malta.

The common word element ‘AFFINITY’ of the signs under comparison will be understood by the relevant public under analysis as referring to a natural attraction or feeling of kinship and associated with the state of being closely connected or mutually dependent. While being vaguely allusive of a positive emotion, it does not describe any of the goods and services in question and as such it is distinctive.

The verbal element and the full stop ‘A lifetime experience.’ of the contested sign will be perceived as a promotional slogan indicating that the goods and services offered are of high quality. As such, the impact of this expression in the overall impression produced by the sign on consumers is limited.

The figurative element of the contested sign consists of a relatively simple geometrical shape and as such it will be perceived merely as a decorative element.

The verbal element ‘Affinity’ together with the figurative element of the contested trade mark overshadows the remaining verbal elements of the mark by virtue of their central position and much larger size. The verbal element ‘AFFINITY’ and the figurative element are therefore the visually dominant elements of the contested trade mark.

Visually, the signs coincide in the distinctive element ‘AFFINITY’ which constitutes the whole earlier mark and plays an independent distinctive role in the contested sign. They differ in the remaining elements of the contested sign. The coinciding element is also the first verbal element of the contested sign and, it is co-dominant along with the figurative element. In this respect, it must be noted that, consumers generally tend to focus on the beginning (or top) of a sign when they encounter a trade mark. This is because the public reads from left to right (or from top to bottom), which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.

The differentiating elements, the promotional slogan, the figurative element and the graphic representation of the contested sign, have less impact. 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).

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

Aurally, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75). Therefore, taking into account the smaller size and the position of the verbal element ‘A LIFETIME EXPERIENCE' as well as its laudatory nature, the contested sign is likely to be pronounced simply as ‘AFFINITY’ when referred to by consumers. Therefore, the pronunciation of the signs coincides in the sound of the distinctive word ‛AFFINITY’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public under analysis. The signs will be associated with a similar meaning on account of the distinctive element ‘AFFINITY’. Due to the laudatory nature of the additional verbal element merely conveying a message that the goods and services concerned are of high quality, this does not constitute a significant difference between them and the additional figurative element does not convey any particular concept to consumers. Therefore, the signs are conceptually 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 particular meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘AFFINITY’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that this mere claim of the applicant does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘AFFINITY’. Under these circumstances, the applicant’s claims must be set aside.

e) 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).

In the present case the goods and services are partly at least similar to varying degrees and partly dissimilar and they target the public at large and professionals. The degree of attention may vary from average to high.

The signs are aurally identical, conceptually highly similar and visually similar to an average degree.

The similarities between the signs lie in the coinciding and distinctive word ‘AFFINITY’, which plays a distinctive role in both signs, while the differences lie in the elements that have less impact on the consumer for the reasons explained above.

In view of the foregoing, and particularly because the similarity between the marks results from the distinctive element ‘AFFINITY’, which co-dominates the overall impression of the contested sign, the Opposition Division is of the opinion that the similarities between the signs cannot be outweighed by their differences, and that the relevant public, even that with high attentiveness, would believe that the goods and services found to be at least similar to varying degrees come from the same undertaking or from economically linked undertakings. Taking into account the interdependence principle referred above, this also holds true for the services found to be at least similar only to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

In its observations, the applicant argues that it owns a company name ‘AFFINITY S.A.’ registered in Portugal since 2012 as well as the domain name www.affinity.pt and submits evidence to prove it. Moreover, it states that it has been publicly using its trade mark ‘AFFINITY’ on social media such as Facebook or Linkedin and on job search websites.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Moreover, the applicant’s claims concern Portugal whereas a likelihood of confusion has in any event been found on the part of the English-speaking public, such as that in the United Kingdom, Ireland and Malta, and the applicant’s alleged use in Portugal can therefore in any event not change the outcome reached above.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

It follows from the above that the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 117 792 and the contested trade mark must be rejected for the goods and services found to be at least similar to varying degrees to the goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 30/01/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/06/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

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.