OPPOSITION No B 3 025 122

Palau Brothers Consulting, S.L., Almogavers 119 2, 08018 Barcelona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Net-Admin Srl, Via San Martino, 5, 20900 Monza, Italy (applicant).

On 07/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 122 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 321 415 , namely against all the services in Classes 37, 38 and 42. The opposition is based on European Union trade mark registration No 9 416 421 . 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 services

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

Class 35: Assistance for the management of commercial and industrial undertakings, information systems management and database services, computerized file management, compilation of data on a central computer, job agency services, psychological testing for recruitment purposes, retail store services, selling via global computer networks of computer software, computer hardware, teaching and training course materials.

Class 41: Education, providing of training and cultural activities.

Class 42: Reconstruction of databases, consultancy in the field of computer hardware, data storage and computer programs, design of computer systems, duplication of computer programs, computer programming, design and development of software and computer software, installation and maintenance of software, updating of software, web design, industrial analysis and research services.

The contested services are the following:

Class 37: Computer hardware and telecommunication apparatus installation, maintenance and repair.

Class 38: Telecommunication services.

Class 42: IT services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 services in Class 37

The contested computer hardware and telecommunication apparatus installation, maintenance and repair are similar to the opponent’s consultancy in the field of computer hardware in Class 42, as consultancy services are usually provided before or together with installation, maintenance and repair services. As all of these services require the same specific technical know-how, they have the same service providers and distribution channels. Moreover, the relevant consumers are also the same and the services can be considered complementary to each other.

Contested services in Class 38

The contested telecommunication services allow people to communicate with one another by remote means. Consumers use apparatus for the transmission or reproduction of sound or images and computers when they want to communicate with others. The contested services are, broadly speaking, broadcasting and/or transmission services, which provide means of communication (e.g. the provision of a network of fibre optic cables; the provision of broadcasts or transmissions via geo-stationary satellite transmission facilities; the rental of communications apparatus and systems). The opponent’s design and development of software are directly or potentially intended to enable telecommunication activities, by allowing access to data networks or connections between various devices, or serve as an interface between the telecommunication equipment and the user. These services therefore have the same purpose. Moreover, the opponent’s services are indispensable for the functioning of telecommunication operations and therefore can be considered complementary. Finally, they are distributed through the same channels and are usually offered under the control of the same entities. Therefore, they are similar.

Contested services in Class 42

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

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 services found to be identical or similar are directed partly at the public at large and partly at business consumers. The degree of attention will vary from average to higher than average, depending on the frequency of purchase of the services and their price.

3. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess 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 about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark containing the verbal element ‘netmind’ depicted in standard lower case letters with the last part, ‘mind’, in bold. Above this verbal element is a figurative device depicting two square brackets with three short vertical lines between them. The earlier mark does not have any element that could be considered more dominant than the other elements.

The verbal element, ‘netmind’, of the earlier mark is depicted as one word; however, since the letters ‘mind’ are in bold and the letters ‘net’ at the beginning are lighter, the relevant public will perceive this element as composed of two elements, namely ‘net’ and ‘mind’, joined together. The element ‘net’ is a common abbreviation for the ‘internet’ and will be understood throughout the European Union as referring to the ‘computer network which allows computer users to connect with computers all over the world, and which carries email’ (information extracted from Collins Dictionary on 23/11/2018 at www.collinsdictionary.com). In relation to the relevant services, all of which are directly linked to computer networks (including related consultancy, software development and hardware installation, maintenance and repair services), this element is not distinctive, as it merely describes the kind and intended purpose of the services in question.

The element ‘mind’ of the earlier mark will be perceived by at least the English-speaking part of the public as referring to, inter alia, ‘intelligence or the intellect’. Although it might allude to the idea of ‘artificial intelligence’ or ‘artificial intellect’, considering that these words are primarily used to refer to the intelligence demonstrated by a computer or other machine, but not used for describing IT-related services, the distinctiveness of the word ‘mind’ is seen as average. The same applies to the part of the public that perceives this word as meaningless, such as the parts of the EU public that speak Baltic, Slavic or Finno-Ugric languages, such as the Bulgarian-, Estonian-, Hungarian-, Latvian-, Lithuanian-, Polish- and Slovak-speaking parts of the public, and, at the same time, do not speak English as a foreign language.

The figurative element of the earlier mark is quite a banal stylised depiction of simple typographic symbols and its degree of distinctiveness is seen as low.

The contested sign is a figurative mark composed of the verbal element ‘NETADMIN’, depicted in stylised black letters with a figurative element depicting a red hand print replacing the dot above the letter ‘i’. Due to the larger size of the first letter ‘N’ and the fourth letter, ‘A’, clearly dividing the contested sign into two elements, the verbal element ‘NETADMIN’ will be perceived as being composed of two elements, namely ‘NET’ and ‘ADMIN’, joined together. The above reasoning as regards the meaning and distinctiveness of the element ‘NET’ also applies here.

As regards the element ‘ADMIN’, at least the professional part of the public will perceive this word as an abbreviation for ‘ADMINISTRATOR’, referring to a ‘person who manages a computer system’ (information extracted from Collins Dictionary on 23/11/2018 at www.collinsdictionary.com). As the services in question may include the managing of computer and telecommunication systems, this element directly refers to the kind of services offered and is therefore non-distinctive for this part of the public. However, it cannot be excluded that the part of the public that does not have any knowledge of network administration and does not speak English will perceive the element ‘ADMIN’ as meaningless and, therefore, as having an average degree of distinctiveness.

The figurative element of the contested sign, although much smaller and less dominant than the verbal element, is nonetheless perceptible due to its striking red colour and, since it does not directly refer to any characteristics of the services in question, has an average degree of distinctiveness.

Visually, the signs are similar to the extent that they both contain the sequence of letters ‘NET’ in the same position, at the beginning of their verbal elements. The following parts of the signs’ verbal elements also have the sequence of letters ‘MIN’ and the letter ‘D’ in common, albeit in different positions. The signs differ in the letter ‘A’ of the contested sign (which has no counterpart in the earlier mark) and their figurative elements, as well as in the colours and stylisation of the contested sign.

The opponent refers to the coinciding sequences of letters in the signs and claims that the verbal element of the earlier mark is reproduced almost in its entirety in the verbal element of the contested sign. Moreover, the opponent also points out that both signs have the sequence of letters ‘NET’ at their beginnings and argues that, considering that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, this commonality will be the first thing that catches the consumer’s attention. Therefore, according to the opponent, the signs are visually highly similar.

The Opposition Division agrees that both signs contain the sequences of letters ‘NET’ and ‘MIN’, as indicated above; however, only the sequence ‘NET’ is placed in the same position, namely at the beginning of the verbal elements in both marks. Moreover, since the remaining letters are in different positions, are depicted in different typefaces and form parts of visually different words, the relevant public will not examine the signs in question letter by letter and, therefore, might not even notice that the marks have letters other than ‘NET’ in common. Moreover, as was held by the General Court, since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The Opposition Division also agrees that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark (because the public reads from left to right, which makes the part placed at the left of the sign the one that first catches the attention of the reader). However, in the present case, account must be taken of the fact that the coinciding element ‘NET’, at the beginnings of the verbal elements of the signs, is non-distinctive and, therefore, will not be attributed any trade mark significance by the relevant consumers. Consequently, this commonality has a minimal impact, if any at all, on creating the similarity between the signs. In addition, the elements that follow the coinciding sequence of letters ‘NET’, namely ‘mind’ in the earlier mark and ‘ADMIN’ in the contested sign, are visually different, as are the signs’ figurative elements.

Considering all the above, the differences between the marks clearly overshadow the commonalities between them and the signs are considered visually similar to at most a low 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 ‛NET’, present identically at the beginning of each sign. Although both signs contain the sequence of letters ‘MIN’, taking into account that it is placed in different positions in the signs under comparison and is preceded and followed by letters with different sounds, as well as the impact of the pronunciation rules in the relevant languages, the presence of the letters ‘MIN’ will not create any noticeable aural commonalities between the signs. Therefore, considering the weight attributed to the coinciding element ‘NET’ (which is non-distinctive, as explained above), the signs are considered aurally similar to at most a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding element ‘NET’ evokes the same concept in each sign, it is non-distinctive and will not lead to any conceptual similarity between the signs, as the consumers’ attention will be drawn to the remaining elements, ‘MIND’ and ‘ADMIN’, which either evoke different concepts (in which only ‘MIND’ is distinctive) or are meaningless, depending on the perception of the public. The figurative element of the earlier mark does not convey any particular concept. The figurative element of the contested sign, due to its much smaller size and because it merely replaces the dot above the letter ‘i’, is unable to create any conceptual difference between the signs and thus has no influence on the conceptual assessment, since the relevant consumers will perceive it as part of the verbal element and not as an independent conceptual unit.

Therefore, the signs are conceptually not similar for the part of the public that will understand the distinctive verbal element ‘MIND’ in the earlier mark and a conceptual comparison is not possible for the remaining part of the public.

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 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 a non‑distinctive element and elements that are distinctive to a low degree in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are partly identical and partly similar to the opponent’s services, and they target the public at large and business consumers with a degree of attention varying from average to higher than average. The degree of distinctiveness of the earlier mark is normal.

The earlier mark and the contested sign are similar insofar as they have a non-distinctive element in common, ‘NET’, at the beginning of their verbal elements. However, they differ in all their remaining verbal and figurative elements. Therefore, as explained in detail in section c), the commonality in the element ‘NET’ leads to at most a low degree of visual and aural similarity. Moreover, either the signs are not similar conceptually or the conceptual aspect has no influence on the comparison of the signs.

The Opposition Division agrees with the opponent that average consumers rarely have the chance to make a direct comparison between different marks and that even consumers who pay a higher 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); however, the similarities between the signs under comparison are insufficient to allow the assumption that relevant consumers who see the contested sign in the absence of the earlier mark, in view of their only general recollection of marks, would be liable to be confused and to think that the contested sign was the same as or related to the earlier mark. Furthermore, the fact that the signs under comparison do not have any verbal elements other than the non-distinctive element ‘NET’ in common, rules out any possibility of confusion, even for the part of the public with an average degree of attention. Moreover, the other sequences of letters that the signs have in common are not in the same positions, not to mention the fact that both signs include completely different figurative elements. Therefore, contrary to the opponent’s arguments, however imperfect the recollection of the relevant public, consumers will definitely notice the differences between the signs and will not perceive the contested sign as a modified version of the earlier mark. Since the overall impressions created by the signs under comparison have clearly perceptible differences, the relevant consumers will not associate them and will not believe that the services in question come from the same undertaking or economically linked undertakings.

Consequently, it can be concluded that the differences between the signs are striking enough to clearly outweigh their commonalities. Therefore, a likelihood of confusion, including a likelihood of association, on the part of the relevant public can safely be excluded, even in relation to identical services.

To support its arguments in favour of similarity and likelihood of confusion between the signs, the opponent refers to previous decisions of the Office. 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, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decisions referred by the opponent are:

1. 25/04/2017, B 2 674 037, SCOTCH & SODA versus SCOTCH & VAIN;

2. 30/10/2009, B 1 205 640, VISION & CONTROL versus VISION & CO;

3. 10/08/2011, B 1 586 372, SMITH & JONES versus SMITH & SOUL;

4. 29/06/2017, B 2 761 768, MOBIFLEX NEO versus Mobiflash;

5. 19/12/2003, B 423 832, QUADIS ON LINE versus QUADRIS;

6. 15/09/2017, B 2 776 634, PLAYFRUIT versus PLAYFRIEND.

However, the decisions cited are not relevant to the present proceedings, since these cases relate either to comparisons of signs with significant commonalities in their distinctive elements or to cases where one of the signs was fully included in the other. Taking into account the different factual circumstances, the decisions cited by the opponent are not considered comparable to the present case.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Oana-Alina STURZA

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.