codecentric | Decision 2420258 - CENTRIC HOLDING B.V. v. codecentric AG

Date Published: Sep 28, 2017

OPPOSITION No B 2 420 258

Centric Holding B.V., Doesburgweg 7, 2803 PL Gouda, The Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage, Anna van Buerenplein, 21A, 2595DA Den Haag, The Netherlands (professional representative)

a g a i n s t

Codecentric AG, Merscheider Str. 1, 42699 Solingen, Germany (applicant), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft Mbb,  

Frankenforster Str. 135-137, 51427, Bergisch Gladbach, Germany (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 420 258 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; Computer hardware; Data carriers with recorded computer software; Optical data media, magnetic data carriers.

Class 38: Arranging and leasing access time to computer databases.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer software and computer hardware; Creation, adaptation and maintenance of computer software; Software design services; Homepage and webpage design; Consultancy in the field of data processing and information technology, In particular in the field of computer software and computer hardware and the networking of data processing equipment; Technical evaluations, appraisals and investigations; Development and design of computer systems; Technical planning.

2.        European Union trade mark application No 12 798 443 is rejected for all the above goods and 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 application No 12 798 443, namely against all goods and services in classes 9, 35, 38 and 42. The opposition is based on Benelux trade mark No 630 982 and international trade mark registration No 766 937 designating Spain, Romania, Denmark, Germany, France, and Sweden. The opponent invoked Article 8(1)(b) EUTMR.

Substantiation of the international registration No 766 937 designating Spain, Romania, Denmark, Germany, France, Sweden

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards this earlier international registration on which the opposition is based.

On 22/10/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After an extension of the period request, this time limit expired on 11/09/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier international registration.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE as regards Benelux trade mark No 630 982

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based Benelux trade mark No 630 982.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 15/07/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Benelux from 15/07/2009 to 14/07/2014 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Class 9: Computers, computer peripherals, recorded computer programmes, control programs and software; computer games; screens; printers.

Class 35: Provision and placement of personnel; business organization consultancy.

Class 37: Maintenance, repair and installation of computer equipment and computer peripheral devices; maintenance, repair and installation of data communication networks apparatus; maintenance, repair and installation of telecommunication installations; repair or maintenance of electrical apparatus, instruments and installations.

Class 42: Technical consultancy and advice; computer programming; computer network management; design of data communication networks and software; consultation regarding the selection of computer hardware and software as well as technical consultation with regard to data communication networks; system analysis; providing programs by means of automated systems, for processing, storing and recall of information; writing and maintaining of recorded computer programs.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/04/2016, according to Rule 22(2) EUTMIR, the Office gave, after an extension of time, the opponent until 11/09/2016 to submit evidence of use of the earlier trade mark. On 09/09/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Printouts from the website www.centric.eu. The opponent states that “Centric offers a wide range of software and infrastructure related services. Consultancy, training, outsourcing and business intelligence are only a few of them”. Moreover, in its observations, the opponent states that Centric Holding B.V. supplies standard software and accompanying services for organisations in a variety of sectors under its trademark ‘CENTRIC’.

• Annual reports from the opponent regarding the trade mark Centric. The annual reports from the years 2009, 2010, 2011, 2012, 2013 and 2014. The reports consist of directors’ reports, ICT services, financial services, engineering and consultancy services, financial report and addresses. In these reports it can be read that the opponent “offers standard and custom software, infrastructures, and professionals for the design, optimisation, management, and support of business processes and information flows. Centric provides these services and solutions through advice, training, licences, staffing support, projects, and full outsourcing”. In the report of 2013 it mentions a “reorganisation of our company in 2013, based on four core activities: ·Software solutions, IT Outsourcing, Business Process Outsourcing, Staffing Services”.

• Press releases.  The one dated 24 February 2011 announces that ICT services provider Centric is expanding to France. Another, dated 16 December 2010, announces that Centric is opening a software development centre in Romania. A press release dated 1 November 2013 announces a new corporate identity of Centric home and abroad.

• Brochures from the opponent headed CENTRIC dated June 2009, October 2009, February 2011, June 2012 and September 2013. Included is the complete magazine of June 2009. The brochures are in Dutch language.

• Invoices:  From Dutch Centric entity to Renault Nederland BV (dated 28 January2010) and the quantity stated in EUR. AnInvoice from Swiss Centric entity to Holcim Group Support Ltd (dated 29 February-2012). Another from Swedish Centric entity to Trygg-Hansa Forsakrings AB (dated 2 February 2014) and the price is stated in Swedish Krona.

• Licence agreements. Several licence agreements with a number of German companies. This evidence is provided in German.

• Extracts of legal entities of CENTRIC registrations of CENTRIC entities at the Chambers of Commerce in Norway (13 March 2006), Belgium (25 June 2006), France (17 November 2010), Switzerland (3 November 2011), Germany (18 July 2007), Romania (6 December 2000), Luxembourg (registered 5 February 1997 and extract is dated 6 October 2010) and Sweden (3 December 2008).

The evidence shows that the place of use is The Netherlands. This can be inferred from the language of the documents (mainly in Dutch), the currency mentioned (‘EUROS’) and one address in The Netherlands regarding the invoices. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The opponent, who is active in the field of software solutions for specific business and sector processes, provided annual reports from the relevant period giving a general overview of its overall commercial and financial activities. These reports, by themselves, did not provide sufficient information on actual use for the majority of services claimed. However, in conjunction with 3 invoices, brochures, press releases and publicity displaying the mark in question for particular services, the Opposition Division concludes that the evidence as a whole provided sufficient indications as to the scope, nature, period and place of use for these services.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following services:

Class 42:        Design of data communication networks and software; consultation regarding the selection of computer hardware and software as well as technical consultation with regard to data communication networks.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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 42: Design of data communication networks and software; consultation regarding the selection of computer hardware and software as well as technical consultation with regard to data communication networks.

The contested goods and services are the following:

Class 9: Computer software; Computer hardware; Data carriers with recorded computer software; Optical data media, magnetic data carriers.

Class 35 Advertising; Business management; Business administration; Office functions; Business consultancy and advisory services; Organization consultancy; Business consulting services; Business consultancy relating to data processing; Computerised data processing; Word processing and computerised file management; Marketing services; Market research and market analysis; Arranging of trading and economic contacts, also over the Internet; Business research; Commercial information agencies; Commercial evaluations, appraisals and investigations; Expert opinion on business efficiency; Business auditing; Statistics (Compilation of -); Organisation of trade fairs and exhibitions for commercial and advertising purposes; Collating and systematic ordering of data in a computer database. 

Class 38: Arranging and leasing access time to computer databases.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer software and computer hardware; Creation, adaptation and maintenance of computer software; Software design services; Homepage and webpage design; Consultancy in the field of data processing and information technology, In particular in the field of computer software and computer hardware and the networking of data processing equipment; Technical evaluations, appraisals and investigations; Surveying; Development and design of computer systems; Technical planning.

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.

 

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 9 

The contested computer software; computer hardware; data carriers with recorded computer software; optical data media, magnetic data carriers are similar to the opponents design of data communication networks and software, given that such service providers are also responsible for the goods and consumers are aware of this. Indeed, the service of designing computer hardware involves all facets of development, implementation and testing of all the physical elements that constitute a computer system which is in contrast to software which concerns the instructions that can be stored and run by the hardware. They can coincide in producer and end user. Furthermore they are complementary.

Contested services Class 35

The contested advertising; business management; business administration; office functions; business consultancy and advisory services; organization consultancy; business consulting services; business consultancy relating to data processing; computerised data processing; word processing and computerised file management; marketing services; market research and market analysis; arranging of trading and economic contacts, also over the internet; business research; commercial information agencies; commercial evaluations, appraisals and investigations; expert opinion on business efficiency; business auditing; statistics (compilation of -); organisation of trade fairs and exhibitions for commercial and advertising purposes; collating and systematic ordering of data in a computer database are dissimilar to the opponent´s services. These services have different providers, channels of trade and end users from the opponent’s services. Furthermore, the services are not in competition with or complementary to each other.

Contested services in Class 38

The opponent’s services can directly or potentially be intended for enabling telecommunication activities such as the contested arranging and leasing access time to computer databases, in terms of allowing access to data networks or connection between various devices, or serving as interface between the telecommunication equipment and the user. These services have the same purpose. Moreover, they are indispensable for the functioning of telecommunication operations. The contested services can be distributed over the same channels and are usually offered under the control of the same entity. Therefore, they are similar.

Contested services in Class 42

Software design services are identically contained in both lists of goods.

The contested design and development of computer software and computer hardware overlap with the opponent’s design of data communication networks and software. Therefore, they are identical.

The opponent´s design of data communication networks and software are similar to the contested consultancy in the field of data processing and information technology, in particular in the field of computer software and computer hardware and the networking of data processing equipment they have the same purpose. They can coincide in end user. Furthermore they are complementary.

The contested scientific and technological services and research and design relating thereto; Industrial analysis and research services promote the research and development of technologies and resources in the scientific, technological and/or industrial fields. These activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. Therefore, they have relevant links with the opponent´s design of data communication networks and software. These services have the same nature, target the same consumers and are offered by the same kinds of specialised companies. Therefore, the services are similar.

The contested creation, adaptation and maintenance of computer software; homepage and webpage design; technical evaluations, appraisals and investigations; development and design of computer systems; technical planning are similar to the opponent’s design of data communication networks and software. All these services belong to the same sector, namely IT. They target the same public, often have the same distribution centres and can be provided by the same or economically linked undertakings.

Finally, as regards the contested surveying, these services are defined as ‘the study or practice of measuring altitudes, angles, and distances on the land surface so that they can be accurately plotted on a map’ (https://www.collinsdictionary.com/dictionary/english/surveying). These services have a different nature and purpose to all of the opponent’s services. The relevant public will not usually coincide. In addition they are neither complementary services nor are they in competition. Therefore, they are dissimilar.

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 and services found to be identical and similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

3. The signs

CENTRIC	codecentric
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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).

First, it must be recalled that the lower-case and upper-case letters used in the contested sign and earlier mark, respectively, do not have any impact on the assessment of the signs’ similarity since the signs are word marks and, thus, their protection relates to the respective word elements and not to the specific figurative or stylistic elements which the marks might have (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).

Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known for the public perceiving it, it is likely that they will mentally divide the mark into the recognized terms or familiar parts forming it (e.g. prefixes or suffixes). Furthermore, in the present case, the elements CODE and CENTRIC are clearly distinguishable as separate elements in the contested sign. The word CODE, in French and German is a term used in the informatics field for expressing information in a form which can be understood by a computer (http://www.larousse.fr/dictionnaires/francais/code/16882?q=code#16753).

 

The element CODE is moreover, weak as regards the conflicting goods, which are related to technology and telecommunications field.

Although CENTRIC does not have a meaning per se in the Benelux countries, it is likely to be associated as being ‘central’ (https://www.collinsdictionary.com/dictionary/english/centric_1), it is a basic English word and also similar to its equivalent such as “centrique” in French.

Visually, the signs coincide in ‘CENTRIC’ and differ in ‘CODE’ (only present in the contested sign, and it is weak).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in CENTRIC and differ in CODE, the latter only present in the contested sign, and as already mentioned, this element is weak.

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

Conceptually, both signs will be associated with the word CENTRIC, they differ in CODE (which is weak), therefore, the signs are conceptually similar to a high degree.

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 goods are similar; the services are partially identical, partially similar and partially dissimilar.

The common part ‘CENTRIC’ of the signs in dispute is the most distinctive of the contested sign and the sole element of the earlier mark. This term has inherently an average distinctive character.

The initial part of the contested mark, ‘CODE’, even if not disregarded, will be weak as mentioned above.  

Thus, the complete reproduction of the earlier mark, CENTRIC, which is inherently distinctive, makes it plausible that those consumers might perceive the contested sign ‘codecentric’ as a mere variation of the earlier mark and that those signs have the same or related origins.

Average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind. Consequently, the complete reproduction of the earlier mark in the contested sign with the mere addition of a weak element does not exclude likelihood of confusion. This applies also to business consumers, whose level of attention is presumed to be higher.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registration No 630 982.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and 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 goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTÓ	José Antonio GARRIDO OTALOA	Erkki MÜNTER

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.