OPPOSITION No B 3 057 509

Aveicellular - Comunicaçóes e Acessórios, Lda., Rua da Cavada - Soutelo, 3850‑516, Branca Alb, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050‑083, Lisboa, Portugal (professional representative)

a g a i n s t

Stratus Technologies Bermuda Ltd., Victoria Place, 5th Floor 31 Victoria Street, HM10 Hamilton, Bermuda (applicant), represented by Filemot Technology Law Ltd, 25 Southampton Buildings, WC2A 1AL London, United Kingdom (professional representative).

On 17/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 509 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 869 600 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 869 600 for the word mark ‘ZTC’. The opposition is based on, inter alia, Portuguese trade mark registration No 522 371 for 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.

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 Portuguese trade mark registration No 522 371 for the figurative mark , which is not subject to proof of use.

1. The goods and services

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

Class 9: Mobile telephones, telecommunications apparatus, parts and accessories therefor; telephones; devices for hands-free use of mobile phones; battery chargers for use with mobile phones and telephones; mobile telephone batteries; routers; tablets.

Class 42: Design of telecommunications apparatus and equipment; design of telephones; computer software design; updating of computer software; design and planning services relating to telecommunication equipment; design services relating to the creation of networks.

The contested goods and services are, after a limitation by the applicant, the following:

Class 9: Computer network interfaces devices; computer software and computer hardware used for monitoring, assessing, controlling, and maintaining the operation of industrial systems.

Class 42: Software as a service for the provision of monitoring, assessing, controlling, and maintaining the operation of industrial systems.

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 network interfaces devices are at least similar to the opponent’s tablets. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested computer software and computer hardware used for monitoring, assessing, controlling, and maintaining the operation of industrial systems are similar to the opponent’s computer software design in Class 42, as they usually coincide in producer, relevant public and distribution channels. Moreover, the contested computer hardware is also complementary to the opponent’s software services.

Contested services in Class 42

The contested software as a service for the provision of monitoring, assessing, controlling, and maintaining the operation of industrial systems is at least similar to the opponent’s computer software design. These services are provided by the same undertakings, through the same distribution channels, and target the same relevant public.

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 similar are directed at the public at large and at a professional public with specific 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.

3. The signs

	ZTC
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 common element ‘ZTC’ has no meaning for the relevant public and is, therefore, distinctive.

The element ‘SP’ in the earlier mark is also meaningless, while the element ‘52’ will be perceived as the number ‘52’. These elements have no direct relation to the relevant goods and services and are therefore distinctive.

The element ‘ZTC’ in the earlier mark is slightly more dominant as, due to its bigger size, it is more eye-catching than the remaining elements ‘SP52’ depicted in a smaller typeface.

Visually, the signs coincide in the element ‘ZTC’, which is the sole element in the contested sign and the first distinctive independent element in the earlier mark. The fact that the coincidence is at the beginning of the earlier mark is particularly relevant since 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. However, they differ in the additional verbal elements ‘SP52’ in the earlier mark, which are at the end and are slightly less dominant, and in the standard grey typeface of the earlier mark, which will not divert the consumer’s attention from the verbal elements.

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

Aurally, the pronunciation of the signs coincides in the sound of the element ‘ZTC’, present identically in both signs. The pronunciation differs in the additional verbal elements ‘SP52’ in the earlier mark.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the number ‘52’ in the earlier mark, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, ‘Sabèl’, EU:C:1997:528, § 22).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and a professional public, the degree of attention varies from average to high.

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).

The goods are similar.

The signs are visually and aurally similar to an average degree. Conceptually, they are not similar.

Taking into account the similarities between the signs, and especially the fact that the contested sign fully reproduces the first independent distinctive, and slightly more dominant, element of the earlier mark, as well as the similarity between the relevant goods and services, it is considered that the relevant public will not be able to safely distinguish between the signs, even with a high degree of attention.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the earlier mark as a sub-brand, a variation of the contested sign, configured in a different way according to the type of goods or services that it designates.

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 Portuguese trade mark registration No 522 371. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Portuguese trade mark registration No 522 371 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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, 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

Valeria ANCHINI

Saida CRABBE

Meglena BENOVA

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.