OPPOSITION No B 3 059 567

E-Health Technical Solutions, S.L., Calle Canónigo Almera 10, 2, Pta. 2, 08031, Barcelona, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002, Alicante, Spain (professional representative)

a g a i n s t

Intelligent Technologies Spółka Akcyjna, Al. Jerozolimskie 98, 00-807 Warszawa, Poland (applicant).

On 02/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 567 is upheld for all the contested services.

2. European Union trade mark application No 17 888 610 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 888 610 for the figurative mark . The opposition is based on European Union trade mark registration No 16 711 806 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.

a) The goods and services

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

Class 9: Systems and equipment for measuring visual function; hardware for computers and mobile devices; computer software; interactive computer software.

Class 37: Installation, maintenance and repair of solutions, systems and equipment for measuring visual function; installation and updating of computer hardware.

Class 42: Design and development of solutions, systems and equipment for measuring visual function; updating of computer software; consultancy, development and design of hardware and software; maintenance of software; software development, programming and implementation.

The contested services are the following:

Class 38: Telecommunication services; provision and rental of telecommunications facilities and equipment; telephone and mobile telephone services; broadcasting services; computer communication and internet access; news agencies; automatic transfer of digital data using telecommunications channels; secure transmission of data, sound or images; digital transmission of data via the internet; digital transmission of voice; consultancy in the field of telecommunications; professional consultancy relating to telecommunications; delivery of digital audio and/or video by telecommunications; provision of reports relating to communications; delivery of messages by audiovisual media; delivery of messages by electronic media; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of messages and data; electronic transmission of instant messages and data; information about telecommunication; information relating to communications; interactive transmission of video over digital networks; interactive broadcasting and communications services; interactive telecommunications services; inter-active video text services; communication by radio; television screen based text transmission services; sending of emergency messages for travellers [by electronic means]; transmission of information via national and international networks; transmission of information by teletypewriter, by satellite; transmission of information and images relating to pharmaceuticals, medicine and hygiene; communication of information by satellite; data communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; transfer of information by radio; transfer of data by telecommunications; packet transmission of data and images; sending of telegrams; reception of television programmes for onward transmission to subscribers; teletyping; mobile media services in the nature of electronic transmission of entertainment media content; communication network consultancy; communication by electronic means; communication by hertzian wave; communications services for the exchange of data in electronic form; communications by television for meeting; radio communications; electronic network communications; communications via multinational telecommunication networks; provision of private mobile radio services; provision of wireless application protocol services including those utilising a secure communications channel; providing communication services through the use of phone cards or debit cards; transmission of data, sound and images via satellites; transmission of data by microwave; transmission of data by teletypewriter; data transmission for others; data transmission; digital transmission of data; telematic sending of information; telematic data transmission and file transfer; telematic communications via computer terminals; radio telecommunications; telecommunication of information (including web pages); relaying of television programmes by extra-terrestrial satellite; retransmission of images via satellite; radio information services; mobile radio communications; radio telephone communication services; radio telegraphic communication services; transmission of coded messages and images; message sending; transmission of sound and vision via satellite or interactive multimedia networks; telegram transmission; sending [transmission] of news; transmission of information by data communications for assisting decision making; transmission of information on optical telecommunication networks; transmission of information by electronic communications networks; transmission of information via teletypewriter; transmission of database information via telecommunications networks; transmission of information in the audiovisual field; transmission of information through video communication systems; information transmission by telematic codes; transmission of stock market information with the help of telecommunication media; transmission of information for domestic purposes; transmission of information for business purposes; transmission and receiving by radio; transmission and reception [transmission] of database information via the telecommunication network; transmission of video films; transmission of written communications (electronic -); transmission of sound, video and information; transmission of sound via interactive multimedia networks; transmission of sound by electronic means; transmission of sound via satellite; sound and picture transmission via satellite; transmission of despatches by electronic means; transmission of data, messages and information; transmission of data via satellite; transmission of data by communications satellite; transmission of data by laser beam; provision of communications via radio; provision of communications facilities for the interchange of digital data; provision of broadband telecommunications access; providing facilities and equipment for video conferencing; provision of information relating to media communications; supply of airtime for communication services; transmission of encrypted communications; transmission of messages, data and content via the internet and other communications networks; transmission of messages by telegram; transmission of messages and images; transmission of news and current affairs information; video transmission via digital networks; transmission of audio and video content via satellite; signal transmission for electronic commerce via telecommunication systems and data communication systems; network transmission of sounds, images, signals and data; satellite transmission of sounds, images, signals and data; satellite transmission; cable transmission of sounds, images, signals and data; transmission of pictures by satellite; transmission of vision via interactive multimedia networks; transmission of sound or visual recordings over networks; transmission of short messages [sms], images, speech, sound, music and text communications between mobile telecommunications devices; transmission of short messages; transmission of interactive television program guides; transmission of information relating to pharmaceuticals, medicine and hygiene; wireless communications services; audio communications services; information, consultancy and advisory services relating to telecommunications; on-line information services relating to telecommunications; information and advisory services relating to telecommunication services; information services relating to telecommunications; information services relating to electronic communication networks; message collection and transmission services; electronic news agency services; electronic transmission of voices (services for the -); telecommunications access services; consulting services in the field of electronic communications; advisory and consultancy services relating to wireless communications and wireless communications equipment; telecommunications consultancy; advisory services relating to communications equipment; digital transmission services for audio and video data; charitable services, namely telecommunication services; secured data, sound and image transmission services; news agency services for electronic transmission; news agency services for telecommunications; news agency services [transmission of news]; wire agency [communication] services; providing information relating to wireless communication; provision of telecommunication tariff information; provision of communications facilities for interchange of electronic data; communication services for the transmission of information; communication services by satellite; communication services by radio; communication services by cable; electronic communications services relating to credit card authorization; electronic communication services for preparing financial information; electronic communication services for transmission by means of cables; electronic communication services for transmission by means of aerials; electronic communication services for financial institutions; electronic communication services for banks; electronic communications services; digital communications services; audiovisual communication services; communications services; electronic communications consultancy; consultancy services relating to data communications; network conferencing services; communication services provided electronically; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; teleprinter communication services; communication services for the electronic transmission of voices; telematic communication services; satellite communication services for business users; radio, telephone, telegraph communication services; optical fibre telecommunications services; radio frequency communications services; communication services for the electronic transmission of data; communication services for the delivery of emergency messages; telecommunications services, namely, personal communication services; telecommunications services for facsimile transmission of information; telecommunications services using cellular radio networks; telecommunications services for typesetting; telecommunications services between financial institutions; telecommunications services to obtain information from data banks; fixed line telecommunication services; air to ground telecommunications services; value added network [communication] services; maritime radio-telephone network services; radio communication network services; radio-facsimile services; narrowband radio communication services; broadband radio communication services; photo uploading services; telex message communication services; message sending services; message sending and receiving services; data communication services accessible by access code; data communication services accessible by password; satellite video conferencing services; teleconferencing and video conferencing services; aeronautical telecommunication services; message services; time sharing services for communications apparatus; mobile telecommunication network services; interactive communication services; electronic transmission of images (services for the -); electronic transmission of information (services for the -); electronic transmission of documents (services for the -); wireless broadband communication services; telecommunications routing and junction services; video transmission services; voice and data transmission services; electronic and telecommunication transmission services; data transmission services over telecommunications networks; digital transmission services; telematics services accessible by password; telex services; digital network telecommunications services; telecommunications services provided via fibre optic, wireless and cable networks; telecommunications services provided by means of optical fibre networks; telegraph telecommunications services; telecommunications services for the distribution of data; telecommunications services between computer networks; telecommunications services for aircraft passengers; providing electronic telecommunication connections; providing high speed access to computer and communication networks; providing of access to telecommunication warehousing services; providing access to telecommunication networks; providing access to electronic communications networks and electronic databases; message sending, receiving and forwarding; virtual chatrooms established via text messaging; operation of wide-band telecommunications networks; operating of electronic communications systems; operation of telecommunications systems; operation of radio frequency communications systems; operation of a telecommunications network; operation of telecommunications satellites; operation of earth-to-satellite television transmitters; operating of electronic communications networks; operation of satellite-to-earth receiver aerials; ticker tape services; video uploading services; providing video conferencing services; video communication services; providing video conferencing services; information transmission services via digital networks; data transmission and reception services via telecommunication means; data transmission services over telematic networks; high bit-rate data transmission services for telecommunication network operators; remote transmission of audio signals by means of telecommunications; remote transmission of data by means of telecommunications; provision of telecommunications connections for telephone chat lines; satellite capacity provision [telecommunications].

An interpretation of the wording of the applicant’s list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

As a preliminary remark, it is also 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.

All the contested services in Class 38 belong to the general group of telecommunication services as well as the provision of information, consultancy and advisory services related thereto. These are services that allow people to communicate with one another by remote means. They are typically provided by specialised telecommunication and/or IT companies.

The opponent’s consultancy, development and design of hardware and software consist of specialised IT services related to the design of computer software and/or hardware systems and the technical consultancy related thereto. These services are involved in the process of ensuring a telecommunication connection, either by designing the technical equipment or the necessary program platforms or by controlling and directing them. Therefore, it is clear that these earlier services have relevant connections with the contested telecommunication services in Class 38.

The telecommunications and the IT industry (the opponent’s services belong to the latter), have been converging and nowadays it is difficult to draw a clear line between the two. It is not uncommon for companies to offer under the same brand both telecommunication services by way of, for example, Internet access, and a wide range of auxiliary services such as cloud computing or creation of websites and homepages in general.

These providers of integrated telecommunication and IT products/services direct their marketing not only at corporate entities and organizations, but also at individuals. In many cases, they will be able to provide their clients with a full package of integrated solutions, comprising a whole series of auxiliary services designed to allow the user to access the telecommunication network and benefit from the possibilities offered by an interactive environment. In addition, these undertakings will also normally provide all the technical consultancy and specialised advices as regards the corresponding services.

Consequently, the Opposition Division considers the aforementioned services under comparison to be similar to at least a low degree, since they may be provided through the same commercial channels, originate from the same undertakings and target the same consumers. Furthermore, they coincide at least partially in their overall purpose of allowing/enabling consumers to establish a smooth and efficient communication. In addition, the opponent’s development and design of hardware and software may be essential for the provision of the applicant’s telecommunication services; therefore, there is also a certain degree of complementarity between these services.

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 services found to be similar to at least a low degree are directed at both the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of their purchase and their price.

c) 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).

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.

In view of the considerations made hereunder in the comparison of signs, and in particular bearing in mind the aural comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Both signs are figurative marks, containing a single verbal element depicted in a relatively standard bold lettering and composed of four letters, ‘WIVI’ vs ‘WIBI’, respectively. The earlier mark is depicted in shades of grey, whereas the contested sign appears in black and blue. The figurative element of the earlier mark consists of a circle with an abstract drawing inside and appears to the right of the verbal element ‘WIVI’. The figurative element of the contested sign is portrayed to the left of the verbal element ‘WIBI’; it consists of a blue circle inside or which a white curved line is depicted.

The verbal elements ‘WIVI’ and ‘WIBI’ are meaningless for the relevant public at issue and, consequently, they are normally distinctive in relation to all the relevant services.

The contested sign also contains the element ‘TM’ in its right upper corner. This element is a negligible feature of the sign, not only because of its minimal size, but essentially because it will be understood as the commonplace symbol for a ‘registered trade mark’. Therefore, this element is non-distinctive and will not have any impact on consumers as an indicator of commercial origin. Consequently, the Opposition Division will not analyse further this element in the below comparison.

As regards the figurative components of the signs (their particular graphic arrangement, their figurative elements and the colours used – in the case of the contested sign), it must be noted the relevant public is used to encountering such elements on the marketplace (circular labels, wavy lines), and does not pay much attention to them, as it affords them an essentially ornamental role. Indeed, consumers normally perceive such elements as graphic embellishments of the corresponding brand and are used to refer to the respective mark by its verbal element: in the present case, ‘WIVI’ and ‘WIBI’ respectively. In addition, the figurative elements in question convey no particular semantic content.

It follows that the verbal elements ‘WIVI’ and ‘WIBI’ are the ones to which consumers will afford the most trade mark significance when faced with these trade marks and the ones that the public will use in order to refer to the signs.

The signs have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their string of letters ‘WI-*-I’*’ and in the fact that they both contain a single verbal element composed of four letters. They differ in their third letters, ‘V’ vs ‘B’ respectively. They also differ in their figurative components (figurative elements, colours and overall stylisation).

It must be noted 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).

Consequently, as previously covered, consumers will afford more trade mark significance to the verbal elements of the signs, ‘WIVI’ and ‘WIBI’.

It must be noted that 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. Therefore, in the present case, the fact the signs coincide fully in their initial string of letters ‘WI*’, as well as in their final letter ‘I’, whereas they differ solely in one letter placed in their middle sections, has a significant impact for the public.

Considering all the above, the signs are considered visually similar to an average degree.

Aurally, both signs will be pronounced in two syllables, which have an identical length and a highly similar structure and aural rhythm: [wi-vi] vs [wi-bi]. It follows that the signs coincide entirely in their initial syllable and also in their final sound ‘i’.

Furthermore, the sound of their third letters (‘V’ vs ‘B’ respectively) will be practically identical, according to the pronunciation rules of the Spanish language.

Therefore, the marks are aurally identical or, at least, aurally similar to a high degree.

Conceptually, as explained above, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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. 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.

e) 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 (recital 11 of the EUTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the contested services in Class 38 are similar, at least to a low degree, to the opponent’s services in Class 42.

The earlier mark has an average degree of inherent distinctiveness.

As previously explained in the ‘Comparison of the signs’ section, the elements to which consumers will attribute the most trade mark significance and the ones that will be used by consumers to refer to the signs, are their verbal elements, ‘WIVI’ and ‘WIBI’ respectively. The figurative components of the marks (devices, colours and overall stylisation) have a secondary role, because they are essentially ornamental in nature and because they present no striking characteristics that would draw the public’s attention away from the verbal elements of the signs.

It follows that the coincidences between the marks (residing in their verbal elements ‘WIVI’ vs ‘WIBI’) occur in the elements of the signs which have more value as business identifiers and cannot be outweighed by their figurative elements and overall get up, because they have less weight than the verbal elements within the overall impression conveyed by the signs. In addition, bearing in mind the interdependence principle mentioned above, it must be recalled that the signs are visually similar to an average degree and aurally identical or nearly identical, due to the particular pronunciation of the letters ‘V’ and ‘B’ by the Spanish-speaking public. Furthermore, none of the signs conveys a meaning that might assist consumers in distinguishing them. Therefore, the heightened similarities between the marks are considered to outweigh and offset the lower similarity between the services in question.

It must also be highlighted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (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).

Consequently, in view of all the relevant factors in the present case, the Opposition Division finds that a likelihood of confusion between the marks cannot be safely excluded, even if a higher degree of attention is displayed by the public.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 711 806. It follows that the contested trade mark must be rejected for all the contested services.

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

Dorothée SCHLIEPHAKE	Gueorgui IVANOV	Anna MAKOWSKA

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.