OPPOSITION No B 3 054 498

Expertus Technology Software, S.A., C. Bambú, 8, 28036 Madrid, Spain (opponent), represented by R. Volart Pons y Cia., S.L., Pau Claris 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)

a g a i n s t

getix, Juhkentali 82, 10132 Tallinn, Estonia (applicant), represented by André Guerreiro Rodrigues, Rua do Farol 394, 3º Dto, Bairro do Rosário, 2750-341 Cascais, Portugal (professional representative).

On 23/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 498 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 895 103 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 17 895 103 for the word mark ‘getix’, The opposition is based on Spanish trade mark registration No 3 662 386 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.

1. The goods and services

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

Class 9: Software platforms for sales of tickets (entertainment).

Class 35: Supply of online sale spaces for sellers and buyers of products and services. retail and wholesales services of tickets (entertainment).

Class 41: Ticket reservation services for shows and sports events.

The contested goods and services are the following:

Class 9: Software; smartphone software; utility software; entertainment software.

Class 41: Booking agencies concert tickets; reservation services for concert tickets; booking agencies for theatre tickets; reservation services for show tickets; reservation services for theatre tickets; booking agency services for theatre tickets; theatre and concert tickets reservation services; booking agency services for cinema tickets; booking agency service for cinema tickets; reservation services for concert and theatre tickets; booking of seats for shows and booking of theatre tickets.

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 goods in Class 9

The contested software; smartphone software; entertainment software are identical to the opponent’s goods, because software and smartphone software include the opponent’s goods and entertainment software is at least overlapping with software platforms for sales of tickets (entertainment), as both are software used for entertainment.

The contested utility software is system software that is designed to help analyse, configure, optimise or maintain a computer. In general, these programs assist users to make and run their computer better. They are also used for password protection, memory management, virus protection, and file compression in order to manage all the computer functions, resources and files efficiently (information extracted from https://www.remosoftware.com/glossary/utility-software on 12/09/2019). However, utility software often forms part of application systems, such as software platforms for sales of tickets (entertainment). As the exact specification of the utility software is not mentioned, it cannot be excluded that it can be used in combination with the software platforms for sales of tickets (entertainment), given that ticket sales suggest a need for better protection of passwords and against viruses, as these platforms are used to transfer money between the parties. Therefore, the goods may have the same producers, distribution channels and relevant public. Moreover, they can be complementary to the extent that one may be needed for the proper functioning of the other. Therefore, the goods are at least similar to a low degree.

Contested services in Class 41

The contested and the opponent’s services in Class 41 have the same nature, provider, and distribution channels; moreover, the relevant public coincides and they might be in competition. Therefore, they are at least similar to a high degree.

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

The services, on the other hand, are directed only at the public at large and the degree of attention is considered to be average.

3. The signs

	getix
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 average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). However, the Court has also held that the consumer, when perceiving a word sign, will break it down into word elements which, for him or her, have a concrete meaning or which resemble words known to him or her (11/11/2009, T‑277/08, Citracal, EU:T:2009:433, § 55).

The elements ‘Be’ and ‘Tix’ of the earlier mark are meaningless and consequently, the public will perceive the earlier mark as a fanciful word presented in slightly stylised type font and in colours.

Contrary to the applicant’s arguments, ‘ix’ and ‘tix’ within the contested signs are not the only common elements. The commonalities are almost all the letters that compose both signs (‘-etix’). Furthermore, ‘ix’ or ‘tix’ are not suffixes in Spanish. Therefore, the applicant’s arguments are rejected as unfounded.

Moreover, the contested sign is a word mark and, in that case, the word is protected and not its written form. Consequently, the sign has no elements that could be considered clearly more dominant than others, which further supports the conclusion as to why the contested sign will not be broken down into elements. The contested sign can also be depicted with capital letters in the same positions as in the earlier mark. The word ‘getix’, composing the entire contested mark, is meaningless and, therefore, of normal distinctiveness.

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).

Aurally, the signs coincide in the sounds ‘*etix’ and differ in the first letters ‘b/g’. However, regarding the pronunciation of the words ‘betix’ and ‘getix’, even the differentiating letters sounds quite similar. Moreover, both signs have the same number of syllables, with the same length and vowels, and the words have the same rhythm.

Therefore, the signs are aurally similar to a high degree.

Visually, the signs differ only in their initial letters ‘b’/‘g’ and in the slight stylisation and colour of the earlier mark. However, the colours and the stylisation are of decorative function.

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

In relation to the applicant’s arguments about the form in which the contested sign is intended to be used, namely , the signs must be compared as they were registered or as they appear in the application for registration (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38). Therefore, the applicant’s argument about the greater visual differences between the earlier trade mark and the contested sign by one hypothetical use of the last is not relevant and must be set aside.

Conceptually, 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.

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, and 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 goods and services have been found partially identical and partially similar (to various degrees). The goods and services target the general public and professional consumers, who will have, respectively, an average to high degree of attention. The signs are aurally similar to a high degree and visually similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs under comparison have the same last four of their five (in total) letters, namely ‘*etix’. As explained above, they differ in their first letters that can, however, be pronounced in a similar manner. The stylisation of the earlier mark is of decorative character. Therefore, the difference concerning the first letters in the signs is not sufficient to outweigh the visual and aural similarities.

Account is also 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).

Even though the differences are at the beginning of the signs, the prevailing visual and aural similarities lead to a sufficiently similar overall impression of the signs. Moreover, the verbal elements do not convey any concept which could help differentiate between them. The degree of similarity between the signs is sufficiently high to counteract even the low degree of similarity for some of the goods.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 662 386. It follows that the contested trade mark must be rejected for all the contested goods and 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

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Michele M. BENEDETTI‑ALOISI

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.