OPPOSITION No B 3 058 143

Cognicase Management Consulting, S.L., C/ Ceudas 2 bis, 28230 Madrid, Spain (opponent), represented by Jaudenes Abogados, Pollensa 2. Oficina 19, 28290 Las Rozas (Madrid), Spain (professional representative)

a g a i n s t

Christian Moser, Ehrenstr. 26, 50672 Köln, Germany (applicant), represented by ESB Rechtsanwälte Emmert Bücking Speichert Matuszak-Lesny Partg mbB, Schockenriedstraße 8 A, 70565 Stuttgart, Germany (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 143 is partially upheld, namely for the following contested services:

Class 42: IT services; design and development of computer hardware; design, development and programming of computer software.

2. European Union trade mark application No 17 889 700 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark registration No 17 889 700 for the figurative mark , namely against all the services in Classes 35 and 42. The opposition is based on Spanish trade mark registration No 2 809 942 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 services

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

Class 38: Communications by national and international networks; telecommunications, reception and distribution of messages, documents and other information by electronic transmission; communications by and/or between computers and terminals of computers; services of access to telecommunications networks by computer and disclosure of information through networks; information transmission services via telematics; transmission and exchange of messages and images; transmission and exchange in multimedia supports; treatment of information by cable networks, transmission of information contained in data banks; information services, advice and information in telecommunication; messenger service; electronic messaging; telecommunication equipment rental; creation of databases and transmission of data included in these basis; transmission of data by a global communication network; consulting and advisory services in telematics and telecommunication; access services to informatic networks; advice in the field of communication and telematics systems; service distribution of messages, documents and other information by electronic transmission.

The contested services are, after a limitation by the applicant on 30/07/2018, the following:

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services.

Class 42: Design services; IT services; testing, authentication and quality control; science and technology services; industrial analysis and research services; design and development of computer hardware; design, development and programming of computer software; all of the aforementioned for it consultancy, and none of the aforementioned in the nature of or related to the fields of aviation, aerospace, defense, or global positioning 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.

It should be noted that the limitation at the end of the specification of the contested sign’s services in Class 42 (all of the aforementioned for IT consultancy, and none of the aforementioned in the nature of or related to the fields of aviation, aerospace, defense, or global positioning systems) does not affect their level of similarity with some of the earlier mark’s services. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparison, the aforementioned limitation will be taken into account, but will not be mentioned in the paragraphs that follow.

Contested services in Class 35

When comparing the contested services in this class, which mainly include services rendered by persons or organisations principally intended to help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications with the public, with the opponent’s services in Class 38, which mainly include services allowing at least one person to communicate with another by sensory means, these are considered dissimilar. These services have a different nature, purpose and method of use. They are not complementary or in competition. They target another public, have different distribution channels and are normally provided by different types of undertakings.

Contested services in Class 42

The contested IT services; design and development of computer hardware; design, development and programming of computer software are similar to, for example, the opponent’s communications by national and international networks; telecommunications, reception and distribution of messages, documents and other information by electronic transmission. These services have the same purpose, they are complementary, have the same distribution channels and are normally provided by the same types of undertakings.

When comparing the contested design services; testing, authentication and quality control; science and technology services; industrial analysis and research services; with the opponent’s services, of which a detailed description has been given above, these are considered dissimilar. These services have a different nature, purpose and method of use. They are not complementary or in competition. They target another public, have different distribution channels and are normally provided by different types of undertakings.

b) Relevant public — degree of attention

The average consumer of the category of services 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 are directed at the public at large, with some more specialised services directed at business customers with specific professional knowledge or expertise, for example, in the telecommunications and IT fields.

The degree of attention may vary from average to above average, depending on the price, frequency of purchase, (specialised) nature and conditions of the services provided.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a figurative mark consisting of the letters ‘CMC’, written in capital letters in a fairly standard pink italicised typeface. To the left of this there is a frame with two rounded corners and two angular ones. Inside of this shape are two interconnected letter ‘C’s, one of which is sold pink and the other (which is reversed) merely outlined in pink. At the bottom, in a much smaller typeface, appear the words ‘Cognicase’, ‘Management’ and ‘Consulting’ in title case with no spaces between them.

The contested sign is a figurative mark consisting of the letters ‘CMC’ written in capital letters in a fairly standard black typeface. To the right of this is a figurative element formed of several solid green dots and some white dots outlined in green.

The letters ‘CMC’, contained in each of the signs, together with the figurative elements in each of the marks, do not refer to anything in particular with respect to the relevant services and are both of normal distinctiveness. Even though the letters ‘CMC’ of the earlier mark could be perceived as being the acronym for the words below it in the sign, this combination of letters is still of normal distinctiveness.

The word ‘Cognicase’ of the earlier mark is meaningless in relation to the relevant services and is distinctive. The words ‘Management’ and ‘Consulting’ refer, respectively, to ‘the control and organizing of a business or other organisation’ and ‘acting in an advisory capacity on professional matters’ (see Collins English Dictionary online). Even though these words are English, the majority of the public, in particular the more professional public, will know the meaning of these words and will perceive them as, at most, weak elements in relation to the services at stake. In any case, all these words, ‘Cognicase’, ‘Management’ and ‘Consulting’, are written in a much smaller typeface than the acronym and are placed at the bottom of the earlier mark in a more secondary position. Therefore, they are less dominant compared to the more dominant letters ‘CMC’, together with the figurative element on the left of the earlier mark.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘C-M-C’, the only difference being in the typefaces in which these letters are written in the marks. Even though these letters are written in a different typeface, the consumer will still clearly perceive those letters as ‘CMC’. The typeface is also fairly standard and will not take the consumer’s attention away from the elements it embellishes. The marks differ in the additional terms ‘Cognicase’, ‘Management’ and ‘Consulting’ of the earlier mark, part of which are not only at most weak elements for the relevant public, but they are also less dominant.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is also applicable for the figurative elements in the earlier mark and in the contested sign.

Therefore, taking all the aforementioned into account and also the distinctiveness and dominance issues, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the individual pronunciation of each of the letters /C-M-C/, which are identically present in both signs. The Opposition Division is of the opinion that the remaining verbal elements of the earlier mark, namely ‘Cognicase’, ‘Management’ and ‘Consulting’, due to their much smaller size and their length, are probably not pronounced by the majority of the consumers.

Taking all the aforementioned into account and also the distinctiveness and dominance issues, the signs are, at least, aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The letters ‘CMC’ are meaningless in both marks. Although part of the expression ‘Cognicase’, ‘Management’ and ‘Consulting’ will evoke some concepts, as these elements are, at most, weak, they will have less impact. However, since these words ‘Management’ and ‘Consulting’ have a meaning and the contested sign lacks any meaning, the marks 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.

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. 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 at most some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The services at issue have been found to be partly similar and partly dissimilar and they are directed at the public at large and a more professional public. The degree of attention varies from average to above average and the earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to at least a low degree, aurally similar to, at least, a high degree and they are conceptually not similar.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their minds (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with 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).

Taking into account all the circumstances, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion, including a likelihood of association. It can reasonably be concluded that consumers will not be able to distinguish the similar marks in dispute for similar services and will perceive them as having the same origin, even for that part of the public that displays a higher degree of attention and is normally less vulnerable for confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 809 942 for the figurative mark   .

It follows from the above that the contested trade mark must be rejected for the services found to be similar to those 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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Carlos MATEO PÉREZ

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.