OPPOSITION No B 3 036 558

Efficient Innovation Société par actions simplifiée, 55 Avenue Clément Ader, 34170 Castelnau-le-Lez, France (opponent), represented by Cabinet Brev&Sud, 55 avenue Clément Ader, 34170 Castelnau le Lez, Hérault, France (professional representative)

a g a i n s t

Innovacion y Consulting Tecnologico S.L.L., C/ Carabela ‘La Niña’ 22, bajos, 08017 BARCELONA, Spain (applicant), represented by Eurokonzern, C/Marceliano Santa María 9‑bajo, 28036 Madrid Spain (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 036 558 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 278 904 for the figurative mark , namely against the services in Class 42. The opposition is based on French trade mark registration No 3 511 231 and international trade mark registration No 951 307 designating Spain and Italy, each protecting the figurative mark . 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.

a) The services

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

French trade mark No 3 511 231 and international trade mark registration No 951 307 designating Spain and Italy

Class 35: Business management and organization consultancy, business management assistance, commercial or industrial management assistance, business appraisals, business management consultancy, professional business consultancy, business expertise services, business information, business investigations, business research, business inquiries, cost price analysis, market studies, market research, economic forecasting, search for information in computer files, projects (business management assistance), personnel management consultancy, computerized file management.

Class 41: Coaching, provision of information relating to training, consultancy services relating to training, arranging and conducting of colloquiums, conferences, congresses, seminars, arranging and conducting of workshops [training].

Class 42: Assessment, estimations and research in the fields of science and technology provided by engineers; conducting technical project studies; research and development of new products for others; technical research; surveying; engineering services.

The contested services are the following:

Class 42: Engineering design and consultancy; feasibility studies relating to engineering projects; scientific services and design relating thereto; technological services and design relating thereto.

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.

The contested services refer to services of engineers and scientists who undertake evaluations, estimates, research, consultancy and design in the fields of science and technology. The services of the earlier marks in Class 42 refer to the same activities and actions as those of the contested one. In general both groups of services consist of various scientific, technological and engineering services, and it is obvious from their wording and meaning that they at least overlap with each other and cannot be clearly separated from one another (e.g. the contested engineering design and consultancy and the earlier engineering services, or the contested technological services and design relating thereto with the earlier research and development of new products for others, or the contested scientific services and design relating thereto with the earlier engineering services). They are therefore identical.

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.

The services found to be identical are directed at a specialised public: scientists and researchers with specific professional knowledge or expertise, and business customers. The services are mainly technical, scientific and engineering services. They are not in the sphere of interest of the public at large, at least due to their intended purpose. Moreover, the services are highly sophisticated, are not used frequently and might be expensive.

Therefore, the degree of attention of the relevant public will at least be above average.

The comparison has been made using services from Class 42, whereas the earlier mark is also protected for services in Classes 35 and 41. The Opposition Division notes that even if a similarity were to be found when comparing the services in Classes 35 or 41, the overlapping public would necessarily also be the professional public, since the contested services are directed at this public, so the degree of attention would be at least above average as well.

c) The signs

Earlier trade mark	Contested sign

The relevant territories are Spain, France and Italy.

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).

When assessing the similarity between signs, an analysis of whether or not the coinciding components are descriptive, allusive or otherwise weak is carried out in order to calculate the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused as to origin of services due to similarities that pertain solely to weak elements.

The common verbal elements in both signs ‘efficient innovation’ are words in English and mean ‘efficient’ - working or operating quickly and effectively in an organized way; efficiently (information extracted from Oxford Dictionary on 14/01/2019 at https://dictionary.cambridge.org/dictionary/english/efficient) and ‘innovation’ - a new idea or method, or the use of new ideas and methods (information extracted from Cambridge Dictionary on 14/01/2019 at https://dictionary.cambridge.org/dictionary/english/innovation).

As the opponent correctly observed, the public in the designating territories of Spain, France and Italy, will perceive the elements ‘efficient’ and ‘innovation’ as meaningful, as the words are very close to the same words in the official languages in those territories, namely ‘efficace’ and ‘innovation’ in French; ‘efficiente’ and ‘innovazione’ in Italian and ‘eficiente’ and ‘innovación’ in Spanish. Consequently, the public will perceive this expression as meaningful in the same manner as the English-speaking public.

Therefore, although the entire phrase does not exactly follow grammar rules in the relevant languages, the meaning of the phrase ‘efficient innovation’ will be clear and understandable for the relevant professional consumer of the services. Additionally, it cannot be excluded that the relevant professional public will also understand the English words in the expression.

Bearing in mind that the services refer to technological services and design relating thereto, consultancy, research and other engineering services, it is considered that ‘efficient innovation’ is a weak expression. It informs the consumers that the services are aimed at the creation of ‘efficient innovation’, can support the process of such creation and the development of innovative products or services. The expression also has a laudatory meaning as all these characteristics are considered very important and desirable by users of the services. Therefore, ‘efficient innovation’, contrary to the opponent’s assertions, will be perceived as descriptive and weak in Spain, France and Italy.

The contested sign’s verbal element ‘incotec’ has no meaning for the relevant public and is, therefore, distinctive.

The expression ‘efficient innovation’ is clearly of secondary importance to the overall impression of the contested sign because it is small and located below the main element ‘incotec’. Moreover, as mentioned above, it could be understood by the public as a promotional slogan which may be considered allusive or laudatory for the services or just the slogan of the company. Therefore, the public will consider it as merely an accessory to the word ‘incotec’ and will not attribute too much trade mark significance to it (see by analogy 15/02/2012, R 2552/2010-1, wellness inspired by nature (FIG. MARK) / WELLNESS et al., § 45, 49). Consequently, this expression is less distinctive than the verbal element ‘incotec’ and attracts consumers’ attention less. Therefore, the word ‘incotec’ is the dominant (visually eye-catching) element of the contested sign, while the remaining verbal and figurative elements are clearly secondary or non-distinctive (the rectangular background of the sign).

In the earlier figurative mark the element ‘efficient’ and its first letter ‘e’ are co-dominant. The whole word, and in particular the first ‘e’, clearly stands out visually in the overall composition of the mark and overshadows the rest of the elements by virtue of its size and the strong contrast of the letters against the white background. Visually, the presentation of ‘e’ is in a clearly different and bigger font than the other letters, which also contributes to it clearly standing out. The second word ‘innovation’ is in notably smaller and much paler grey letters, placed below the word ‘efficient’. Therefore, the word ‘efficient’ and the first ‘e’ are the visually eye-catching elements, with the other element secondary.

Visually, the signs coincide in the words ‘efficient’ and ‘innovation’. However, the role of these elements and their positions and specific depictions differ significantly in both signs. In the earlier mark, the word ‘efficient’ is co-dominant and the word ‘innovation’ is placed on a second line and visually subordinated, while in the contested sign ‘efficient innovation’ is one complete expression, presented on one line in a secondary position within the overall structure of the sign. The presentation of the first letters of the expression is also very different, as in the earlier sign the ‘e’ is so large and different that on its own it presents a co-dominant element. The element ‘incotec’ is the most distinctive and dominant element of the contested sign, which has no counterpart in the earlier mark. All other figurative and non-distinctive elements in the signs (backgrounds and fonts) are also different, which contributes to their different visual impression. Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs could possibly coincide in the sound of the words ‘efficient innovation’, present identically in both signs. However, as this phrase plays a secondary role, visually, in the contested sign, and as the relevant public will see it as a slogan of the company or just a descriptive expression, it is unlikely to be pronounced at all. It has been confirmed by case-law that consumers naturally tend to shorten long marks in order to reduce them to elements that are easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 09/04/2013, T‑337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T‑539/15, SILICIUM ORGANIQUE G5 LLR-G5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), and that consumers generally only refer to the dominant elements in the trade mark.

In the Opposition Division’s opinion, the contested sign would be referred to simply as ‘incotec’. It would not matter if the earlier mark was referred to as ‘efficient innovation’ or only as ‘efficient’, since the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the elements of the marks. The signs coincide in the expression ‘efficient innovation’, which is weak and plays a secondary role within the contested sign. However, the signs differ in the dominant, distinctive and meaningless element ‘incotec’ from the contested sign. As the signs only coincide in their secondary and, moreover, conceptually weak elements, they are conceptually similar to a low degree.

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 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 below average for all the services. Its distinctive character lies predominantly in the composition of the mark and, to a very low degree, on the fact that the English expression is used for a sign in countries where the official language is not English.

e) Global assessment, other arguments and conclusion

The services are identical and the distinctive character of the earlier mark is below average. The degree of attention of the relevant public is, considering the nature of the services, above average,. The signs are visually and conceptually similar to a low degree, and aurally dissimilar. It is obvious that the identical words ‘efficient innovation’ are in relation to the services in conflict, and are therefore of very low distinctiveness.

It is settled case-law that if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (see in this context the decisions of the Boards of Appeal of 18/03/2002, R 0814/2001-3, ‘ALL-DAY AQUA / Krüger All Days’, paragraph 50 and of 14/05/2001, R 0257/2000-4, ‘e plus / PLUS’, paragraph 22). These differences decrease the likelihood of confusion between the conflicting trade marks.

Therefore, coincidence in the terms ‘efficient innovation’ will not lead the public to infer automatically that the services marketed under these signs are provided by the same or economically linked undertakings.

In the contested sign the most distinctive and dominant element is ‘incotec’, which has no equivalent in the earlier sign. The ‘efficient innovation’ part has a secondary role and will very likely be perceived by the public either as a slogan of the company or in a laudatory manner. Therefore, the public will perceive the element ‘incotec’ as the denomination of the commercial origin.

As to the earlier sign, the emphasis is on the word ‘efficient’ and more precisely on the letter ‘e’. These are the visually outstanding and co-dominant elements, while the word ‘innovation’ is subordinate, due to its graphical depiction, size and position.

Considering the individual characteristics of the signs, they differ in their overall visual, conceptual and aural structure and the public will not attribute a common origin to the services protected by them. The similarities between the signs are in weak or secondary elements, which are, moreover, presented with different emphasis in the signs. Therefore, the similarities are insufficiently strong to counteract the aural, visual and conceptual differences and the overall impression that ensures that there can be no likelihood of confusion.

It remains necessary to consider the opponent’s argument concerning previous decisions of the Office in support of its position. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, MehrfürIhr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

However, it should be noted that in the examples provided, the goods and services are mainly directed at the general public. The degree of attention of the public and the distinctiveness of the earlier signs are also different, namely average. Moreover, in three of four of the cases where likelihood of confusion was found, the public was from the territories of Hungary, Germany, Czechia, and Slovakia and the comparison was not between two figurative signs. In the fourth case (B 1 555 054) the signs differed in a weak element ‘solar’, so there was a difference compared to the current case.

The Opposition Division considers that there is no likelihood of confusion or association, since the low degree of visual and conceptual similarity between the signs, and the different overall impression they give, largely counteracts their common elements. The relevant public will be able to safely distinguish between the marks.

Therefore, the opposition is rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Maria SLAVOVA

Dorothee SCHLIEPHACKE

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.