abrakadabra | Decision 2658907
Date Published: Sep 28, 2017
OPPOSITION No B 2 658 907
ABRA Software a.s., Jeremiášova 1422/7b, 15500 Praha 13, Czech Republic (opponent), represented by Propatent - Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)
a g a i n s t
A007 d.o.o., Trg D. Petrovića 3, Zagreb 10 000, Croatia (applicant), represented by Mladen Vukmir, Gramaca 2 L, Zagreb 10000, Croatia (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 658 907 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 14 801 757, namely against some of the services in Class 35 and all the services in Class 42. The opposition is based on the Czech trade mark registration No 179 959 ‘ABRA’, Czech trade mark registration No 268 705 ‘ABRA G4’, European Union trade mark registration No 11 665 651 ‘ABRA mGATE’, Czech trade mark registration No 183 277 ‘ABRA GOLD’, Czech trade mark registration No 196 414 ‘ABRA CLASSIC’, Czech trade mark registration No 224 282 ‘ABRA G3’, Czech trade mark registration No 268 706 ‘ABRA G2’, Czech trade mark registration No 308 190 ‘ABRA 6310’ and Czech trade mark registration No 308 552 ‘ABRA Software pro lidi’. The opponent invoked Article 8(1)(a) and (b) EUTMR.
PRELIMINARY REMARKS
In the notice of opposition, the opponent indicated three earlier trade marks as a basis for opposition, namely the Czech trade mark registration No 179 959 ‘ABRA’, the Czech trade mark registration No 268 705 ‘ABRA G4’ and the European Union trade mark registration No 11 665 651 ‘ABRA mGATE’.
However, the opponent also attached to the notice of opposition six translated registration certificates of other earlier rights, namely Czech trade mark registration No 183 277 ‘ABRA GOLD’, Czech trade mark registration No 196 414 ‘ABRA CLASSIC’, Czech trade mark registration No 224 282 ‘ABRA G3’, Czech trade mark registration No 268 706 ‘ABRA G2’, Czech trade mark registration No 308 190 ‘ABRA 6310’ and Czech trade mark registration No 308 552 ‘ABRA Software pro lidi’.
According to the Guidelines for examination of European Union trade marks, and as regards the identification of the earlier rights, identification elements are to be looked for not only in the notice of opposition, but also in annexes or other documents filed together with the opposition or any documents submitted within the opposition period.
As regards the indication of the goods and services on which the opposition is based, according to the Guidelines, even if the opponent has not indicated, or has not clearly indicated, on which goods and/or services it bases its opposition, it is sufficient that a registration certificate in the language of the proceedings is attached; it is then assumed that the opposition is based on the goods and services that appear in the certificate.
As regards the indication of the grounds for opposition, according to the Guidelines, the grounds are to be considered as properly indicated if the earlier mark is identified and the opposition can be considered to be based on Article 8(1) EUTMR.
Therefore, the Opposition Division will examine the opposition taking into consideration the following earlier rights, goods and services and grounds as basis for opposition: Czech trade mark registrations No 179 959 and No 268 705, European Union trade mark registration No 11 665 651 for the goods and services as indicated in the notice of opposition and in relation to Article 8(1)(b) EUTMR, and Czech trade mark registrations No 183 277, No 196 414, No 224 282, No 268 706, No 308 190, No 308 552 for the goods and services as indicated in the registration certificates and in relation to 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.
- The goods and services
The goods and services on which the opposition is based are the following:
Czech trade mark registration No 179 959:
Class 9: Computer software.
Class 42: Development of software.
Czech trade mark registration No 268 705:
Class: 9: Devices and instruments – electronic devices; programs and software products.
Class 42: Providing software.
European Union trade mark registration No 11 665 651:
Class 9: Computer software, electronic publications.
Class 42: Development and rental of software, creation and maintenance of websites, consultancy in the field of computer software, programming, installation and updating of computer software, computer system design, consultancy in the field of computer hardware.
Czech trade mark registration No 183 277:
Class 9: Economical software.
Czech trade mark registration No 196 414:
Class 9: Software.
Class 16: Documentation.
Class 42: Provision of software.
Czech trade mark registration No 224 282:
Class 9: Apparatuses and instruments – scientific, navigating, geodetic, electronic, photographic, cinematographic, optic, measuring, signalling, automatic devices actuated by coin or card insertion, machines for recording, transmission and reproduction of sound or image, cash registers, computer technology, fire extinguishers, programmes and software products.
Class 16: Office equipment (except furniture), paper products, especially software manuals, leaflets, product instruction guides, photographs, posters.
Class 35: Activities of organizational and economic advisors.
Class 37: Mounting and repairs of computer technologies, office equipment and electronics.
Class 42: Providing software.
Czech trade mark registration No 268 706:
Class 9: Devices and instruments – scientific, navigating, geodetic, electronic, photographic, cinematographic, optic devices, measuring, signalling, automatic devices actuated by coin or card insertion, machines for recording, transmission and playback of sound and image, cash registers, computing technology, fire extinguishers, programs and software products.
Class 16: Office supplies (except furniture), paper products, especially manuals for software, leaflets, product instruction guides, photographs, posters.
Class 35: Activities of management and economic consultants.
Class 37: Assembly and repairs of computer technology, office equipment and electronics.
Class 42: Providing software.
Czech trade mark registration No 308 190:
Class 9: Computing technology, programs and software and hardware products , electronics.
Class 37: Assembly and repairs of computer technology, office equipment and electronics.
Class 42: Design and rental of computer software.
Czech trade mark registration No 308 552:
Class 9: Computer software, data, databases and other information products on data carriers and on electronic data, information, telecommunication networks of all kinds, multimedia information catalogues, electronic documents, data carriers of all kinds - electronic, in particular audio, video and audiovisual recordings, electronic publications, computer hardware, photographic, cinematographic and optical apparatus and instruments, apparatus for recording or reproduction of sound or images, computer games, computer disks, computers, printers, multimedia apparatus, chips, computer interfaces, modems, scanners, microphones, monitors, loudspeakers, CD-ROMs, sound cards, disk drives, videos, mice, word processors, facsimile machines, satellite antennas, compact discs, telephones, photocopiers, parts and components for all the aforesaid goods.
Class 42: Development and rental of software, creation and maintenance of websites, consultancy in the field of computer software, recovery of computer data, programming, installation and updating of computer software, computer system design, consultancy in the field of computer hardware, computer rental, computer virus protection.
Class 45: Licensing of computer programs, protection of intellectual property, licensing of copyright and industrial property rights, management of copyright and related rights- within this class, implementation or brokering the transfer of copyright and rights to computer software.
The contested services are the following:
Class 35: Retail sales services of consumer electronics, electronic goods, books; on-line retail and wholesale distributorship services of consumer electronics, electronic goods, books; provision of sales consumer electronics, electronic goods, books; computerized on-line ordering services featuring a wide variety of consumer goods; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users.
Class 42: Services relating to computerised on-line searching for ordering, delivery and transportation of consumer good; providing temporary use of on-line non-downloadable computer software for payment processing, authentication, management and tracking; providing an interactive web site featuring technology that enables users to enter, access, track, manage, monitor, and generate information and reports regarding sales of products and services.
Although the goods and services in question are not identical, it is clear that some of the contested services are similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were similar to those of the earlier mark.
- 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, services of providing temporary use of on-line non-downloadable computer software for payment processing, authentication, management and tracking; providing an interactive web site featuring technology that enables users to enter, access, track, manage, monitor, and generate information and reports regarding sales of products and services are directed at business customers with specific professional knowledge or expertise. The remaining goods and services assumed to be similar are directed at both, general public and at business customers with specific professional 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 purchased goods and services.
- The signs
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Earlier trade marks | Contested sign |
The relevant territory is Czech Republic and, as regards the earlier European trade mark registration No 11 665 651 (‘ABRA mGATE’) 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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The contested mark is a figurative mark containing a word element ‘abrakadabra’ written in a black standard font and an orange star at the beginning of the sign. The word ‘abrakadabra’ will be understood in Czech Republic and throughout the European Union as referring to an incantation used as a magic word in stage magic tricks (although in some languages written as abracadabra) and thus has no meaning that could be descriptive, allusive or otherwise weak in relation to the services in question. The depiction of a star, will be on the other hand, perceived as indicating higher quality of the services in question, and is thus considered weak.
The contested sign has no elements that could be due to its size or position considered clearly more dominant than other elements.
The earlier marks are all word marks consisting of a word ‘ABRA’, and in case of eight earlier marks, additional word elements. The word ‘ABRA’ does not have any meaning in Czech. It may have meanings in other languages (e.g. cove, haven, pass in Spanish; imperative open in Portuguese). None of these meanings is, however, descriptive, allusive or otherwise weak in relation to the goods and services in question. The elements ‘G2’ ‘G3’ and ‘G4’, may be perceived by part of the Czech speaking consumers as reference to stages of successive improvement in the development of a product or system (Generation 2, Generation 3, Generation 4); the element ‘6310’ may be perceived by part of the Czech speaking consumers as a reference to the model number, serial number, etc.; the element ‘GOLD’ may be perceived by part of the Czech speaking consumers as a reference to a superior quality; the element ‘CLASSIC’ may be perceived by part of the Czech speaking consumers as a reference to something famous or well-known or adhering to an established set of rules; the element ‘Software pro lidi’ will be understood by Czech speaking consumers as software for the people; the element ‘mGATE’ may be understood by part of Czech speaking consumers as well as by part of consumers throughout the European Union as mobile Gateway. Taking into account the nature of the goods and services covered by the earlier marks, these additional elements are considered weak, if not non-distinctive. For the remaining part of the relevant public, the earlier signs have no elements that could be considered clearly more distinctive than other elements.
Being the word marks, the earlier signs have no elements that could be considered clearly more dominant than other elements.
Visually and aurally, the signs coincide in ‘ABRA’. They differ in the additional word elements (of the eight earlier marks), and the letters ‘KAD’ and ‘ABRA’ at the end of the contested sign. Visually, they additionally differ in the star and the stylisation of the contested sign. The marks differ in length and structure (one verbal element against two verbal elements in case of eight earlier marks). Although it is true that additional word elements of the eight earlier signs, i.e.: G4, mGATE, GOLD, CLASSIC, G3, G2, 6310, Software pro lidi play a limited role in the comparison of the signs for part of the relevant public, the element ‘ABRA’ is not recognisable as such in the contested mark because it does not play an independent distinctive role in the overall impression of the contested mark, particularly as it is not separated visually by, for example, a space or hyphen. To find otherwise would require artificially dissecting the mark in a manner that does not comport with settled trade mark law and practice, whereby consumers normally perceive a sign as a whole and do not proceed to analyse its various details.
Moreover, while it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (16/05/2007, T-158/05, Altrek, EU:T:2007:143, § 70).
Therefore, the signs are similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The word element ‘abrakadabra’ of the contested sign will have a clear and immediate meaning for the relevant public in the Czech Republic and throughout the European Union.
As such, the signs are not conceptually similar (whether the relevant public perceives one or more meanings in the earlier signs or does not associate the earlier signs with any meaning).
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim. The opponent makes a reference to a list of well-known marks of the Czech Patent Office and to the market research, however, no evidence is submitted. As regards the relevance and probative value of previous Office decisions, in particular the decision of the Cancellation Division in the proceedings for a declaration of invalidity No 2198 C, the Opposition Division cannot solely rely on its findings: they should be evaluated only in conjunction with other evidence especially that the time that has elapsed between those two cases is quite long (the previous decision is dated 05/06/2009). Thus, the findings of the earlier decision, on their own, do not let the Opposition Division to draw a conclusion on alleged enhanced distinctiveness of the earlier marks.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of some weak/non-distinctive elements in the marks for part of the relevant public as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
In the present case, it has been assumed that the contested services are similar to the opponent’s goods and services. It has been also established that the signs are visually and aurally similar to a low degree.
Moreover, aural and visual similarities may be counteracted by conceptual differences which distinguish the marks in question. For there to be such a counteraction, at least one of the marks in question must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (16/01/2008, T-112/06, Idea, EU:T:2008:10, § 76 ). In the case at hand, the verbal element ‘abrakadabra’ of the contested sign possesses, for the relevant public, specific semantic content, which the public is capable of grasping immediately and is fully distinctive for the services in question.
However, even visual and aural differences are remarkable – the signs have different length and structure: the mere coincidence in few letters cannot, for that reason alone, give rise to confusion among consumers. As explained above, the word ‘ABRA’ is not recognisable as such in the contested sign but only forms part of a recognisable word ‘abrakadabra’.
Although the opponent does not explicitly use the term ‘family of marks’ it remains necessary to consider the opponent’s reference to the series or set of marks formed by the common element ‘ABRA’.
The concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.
Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.
In the present case, the opponent failed to prove that it uses a family of ‘ABRA’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The opponent did not file any evidence.
Considering all the above, even assuming that the goods and services are similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Steve HAUSER | Anna BAKALARZ | Adriana VAN ROODEN |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.