OPPOSITION No B 3 096 484

IT Minds ApS, Katrinebjergvej 93 B, 8200 Aarhus N, Denmark (opponent), represented by Dahl Lawfirm P/S, Kaj Munks Vej 4, 7400 Herning, Denmark (professional representative)

a g a i n s t

Itmind, S.r.l., Via Dorati 119, 55100 Lucca, Italy (applicant).

On 24/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 484 is upheld for all the contested services.

2. European Union trade mark application No 18 081 510 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 18 081 510 for the word mark ‘ITMIND’, namely against all the services in Class 42. The opposition is based on European Union trade mark registration No 10 396 752 for the word mark ‘IT Minds’. The opponent invoked Article 8(1)(a) and (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, inter alia, based are the following:

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Software design; maintenance of computer software; Development of software solutions for Internet providers and Internet users; Software development; Computer hardware, software and program design; updating of computer software; Creation of data-processing programs; Software customisation services; Consultancy services relating to computer networks using mixed software environments; Design of computer software; Research and consultancy services relating to computer software; Updating and maintenance of computer software and programs; Consultancy in the field of computer hardware and software; Installation of computer programs; Maintenance and repair of software; Software development services; Design and development of computer hardware and software; Maintenance of computer software; Consulting services in the field of computer software; Customization of computer hardware and software; Development, maintenance, updating and adaptation of software; Software research; Conversion of data and computer programs (other than physical conversions); Data conversion of computer programs and data (not physical conversion); Design of computer programs; Software installation; Conversion of data or documents from physical to electronic media; Creation, updating and adapting of computer programs; Updating and adapting of computer programs according to user requirements.

The contested services are the following:

Class 42: Rental of computer hardware and facilities; IT consultancy, advisory and information services; Hosting services, software as a service, and rental of software; IT security, protection and restoration; Software development, programming and implementation; Server administration; Remote server administration; Preparation of computer programs for data processing; Consultancy in the field of computers; Updating websites for others; Administration of user rights in computer networks; IT services.

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.

The contested IT consultancy, advisory and information services; consultancy in the field of computers include, as broader categories, or overlap with, the opponent’s consultancy in the field of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested software development, programming and implementation; preparation of computer programs for data processing; IT services are identical to the opponent’s design and development of computer hardware and software and creation of data-processing programs, because the opponent’s services include, are included in, or overlap with, the contested services.

The contested rental of computer hardware and facilities; hosting services, software as a service, and rental of software; IT security, protection and restoration; server administration; remote server administration; updating websites for others; administration of user rights in computer networks and the opponent´s design and development of computer hardware and software usually coincide in relevant public and distribution channels, and are generally rendered by the same kind of undertakings (employing professionals in the IT field), which normally provide a full spectrum of IT solutions tailored to the needs of their customers. Therefore, these services are similar.

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 at the public at large (e.g. rental of computer hardware and facilities) or at business customers with specific professional knowledge or expertise (e.g. administration of user rights in computer networks).

The public’s degree of attentiveness may vary from average to high, depending on the sophistication, specialised nature or terms and conditions of the services purchased.

3. The signs

IT Minds	ITMIND
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.

The verbal elements of the signs are meaningful for at least the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since there is more of a conceptual proximity between the signs than in other languages, as will be explained below.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). This applies fully to the contested sign, as all the parts of the term ‘ITMIND’ suggest, even without a visual separation, a concrete meaning for the relevant public, as will be explained below.

The word ‘IT’, identically contained in both marks as their first element, will be understood as the abbreviation for ‘Information Technology’. Taking into account that the services at issue are IT-related, this word is non-distinctive. The word ‘mind’, included as such in the contested sign and in its plural form in the earlier mark, refers inter alia to a particular way of thinking, influenced by a person's profession or environment (information extracted from Oxford English Dictionary on 20/07/2020 at https://premium.oxforddictionaries.com/definition/english/mind). The term ‘IT MIND’, or its plural form ‘IT Minds’, could be perceived as allusive in relation to the services at issue in that it hints at the fact that they are rendered by IT professionals, i.e. people with an IT Mind. It is therefore distinctive to a below average degree.

Be that as it may, although the degree of distinctiveness of the verbal element ‘IT MIND(S)’ is below average for the relevant public for the services at issue, it is on an equal footing in both marks and has no impact on the comparison because there are no remaining elements which would play a more distinctive or dominant role within the signs.

Visually and aurally, the signs coincide in (the sound of) the string of letters ‘ITMIND’, which constitute the contested sign in its entirety. They only differ in (the sound of) the earlier mark´s last letter ‛S’.

Therefore the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, one only being the plural form of the other, the signs are conceptually similar to a high degree.

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.

According to the opponent, the earlier mark has an above average degree of distinctiveness regarding the relevant goods and services. It should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. Any higher degree of distinctiveness acquired by the earlier mark has to be proven by its proprietor by submitting appropriate evidence.

As the opponent did not submit any evidence in this regard, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below-average.

5. Global assessment, other arguments and conclusion

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.

The services are partly identical and partly similar. They target the general public and business customers with specific professional knowledge or expertise. The degree of attention varies from average to high. The signs are visually, aurally and conceptually similar to a high degree.

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). Admittedly, the inherent degree of distinctiveness of the earlier mark is below average for the services at issue. However, the below average degree of distinctiveness of this element cannot prevent the opposition from succeeding. It is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102). The differences caused by the additional letter and sound ‛S’ in the earlier mark and the fact that it consists of one term are largely outweighed by the fact that the signs coincide in all of the letters/sounds of the contested sign.

Therefore, taking into account the identity or similarity of the contested services and the relevant public’s imperfect recollection, it cannot be excluded that the relevant consumers, even if they have a high degree of attention, will perceive the contested mark as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), and they will therefore assume that the services covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 earlier mark. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Zuzanna STOJKOWICZ

Christophe DU JARDIN

Loreto URRACA LUQUE

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.