INVISION | Decision 2698200
Date Published: Oct 1, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 698 200
Visiomed Group, 112 avenue Kléber, 75116 Paris, France (opponent), represented by
Mélanie Erber, 62 avenue Marceau, 75008 Paris, France (professional representative)
a g a i n s t
iBasis, Inc., 10, Maguire Road, building 3, third floor, Lexington Massachusetts 02421
United States of America (applicant), represented by Koninklijke KPN N.V., Koenraad
Wuyts, Maanplein 55, 2516CK The Hague, The Netherlands (professional
representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 200 is upheld for all the contested goods and services,
namely:
Class 9: Network controlling apparatus; Network communication apparatus;
Monitoring control apparatus [electric]; Remote monitoring
apparatus; Data communications software; Testing and quality
control devices; Alarms and warning equipment, all aforementioned
only in the field of telecommunications.
Class 42: Monitoring of network systems; Computer system analysis;
Technical data analysis services; Computer software for
commercial analysis and reporting; Troubleshooting of computer
software problems; Computer security system monitoring services;
Quality control, all aforementioned only in the field of
telecommunications.
2. European Union trade mark application No 15 069 024 is rejected for all the
contested goods and services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 069 024 ‘INVISION’ (word mark),
namely against all the goods and services in Classes 9 and 42. The opposition is
based on European Union trade mark registration No 14 181 325 ‘MyIvision’ (word
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
Decision on Opposition No B 2 698 200 page: 2 of 8
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Cameras, video cameras; WebCam; Signalling apparatus and
instruments, in particular warning systems (baby monitors), wireless
electronic apparatus for the transmission of sound, images or data ;
Wireless electronic apparatus for monitoring and controlling the
operation of other electronic apparatus ; Audio and video apparatus
for monitoring purposes ; Electric and electronic alarm, surveillance
and security systems and installations; Electric and electronic anti-
theft installations; Burglary and intrusion detectors and sensors;
Alarms; Burglar alarms; Electronic video surveillance systems; Electric
and electronic monitoring apparatus; Electric and electronic signalling
apparatus; Camcorders; Transmitters of electronic signals;
Transmitting sets (telecommunication); Computers and data
processing equipment; Accelerometers; Peripherals adapted for use
with computers; USB flash drives; Optical data carriers; Magnetic data
carriers; Computer software; Electric power controllers; Apparatus and
instruments for conducting, switching, transforming, accumulating,
regulating or controlling electricity; Apparatus for recording,
transmission or reproduction of sound or images; Amplifiers; Alarm
bells; Electric or electronic apparatus and instruments for measuring
energy or fluid consumption; All the aforesaid goods relating to
domestic alarm, surveillance, security and home automation systems
and installations; Computer application software for mobile telephones
and other wireless devices, namely computer software for the
recording, viewing, storing, sharing and analysing of online audio and
video content; Apparatus for recording, transmission or reproduction
of sound or images; Apparatus for the reproduction of sound; Audio
amplifiers; Public address systems; Image scanners; Downloadable
music files; Videophones; Audiovisual receivers; Videotapes; Video
screens; Musical video recordings; Video processors; Radio
frequency identification devices (transponders); Radio pagers; Radios;
Radiotelephony sets; Radiotelegraphy sets; Radio transmitters; Radio
beacons; Portable radios; Pager; Radio receivers; Video telephones;
Intercoms; Video monitors; Headphones; Headphones; Video players;
Optical character readers; Internet phones; Transmitter receivers;
Mobile data receivers; Satellite receiving apparatus; Telephone
receivers; Apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity;
Apparatus for recording, transmission or reproduction of sound or
images; Apparatus for the reproduction of sound; Apparatus for the
processing of information; Audio amplifiers; Public address systems;
Image scanners; Downloadable music files; Videophones; Audiovisual
receivers; Camcorders; Videotapes; Video screens; Musical video
recordings; Video processors; Radio frequency identification devices
Decision on Opposition No B 2 698 200 page: 3 of 8
(transponders); Radio pagers; Radios; Vehicle radios; Radio
apparatus.
Class 42: Design and development of computer hardware and software; Design,
installation, maintenance, updating and rental of computer software;
Computer programming.
Class 45: Security services for the protection of property and individuals;
Security consultancy; Monitoring of burglar and security alarms;
Providing of a website containing information relating to security.
The contested goods and services, after limitation, are the following:
Class 9: Network controlling apparatus; Network communication apparatus;
Monitoring control apparatus [electric]; Remote monitoring apparatus;
Data communications software; Testing and quality control devices;
Alarms and warning equipment; all aforementioned only in the field of
telecommunications.
Class 42: Monitoring of network systems; Computer system analysis; Technical
data analysis services; Computer software for commercial analysis
and reporting; Troubleshooting of computer software problems;
Computer security system monitoring services; Quality control; all
aforementioned only in the field of telecommunications.
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 network controlling apparatus; network communication apparatus;
monitoring control apparatus [electric]; remote monitoring apparatus; testing and
quality control devices; alarms and warning equipment; all aforementioned only in
the field of telecommunications overlap with the opponent’s apparatus for the
processing of information in Class 9. The latter is a broad category encompassing
different data processing devices including specialised hardware for enabling
telecommunications network connectivity, such as hubs, switches and routers, and
various units of network operation centre’s equipment used for the monitoring and
troubleshooting a telecom network’s performance, such as quality testing monitors for
system performance, and system failure alarms. Since it is impossible to clearly
separate these categories, these goods are identical.
The contested data communications software; all aforementioned only in the field of
telecommunications is complementary with the opponent’s apparatus for the
processing of information in Class 9. Moreover, these goods are directed at the same
public who expects that they originate from the same providers and look for them on
the same distribution channels. Therefore, they are similar.
Contested services in Class 42
An interpretation of the wording of some of the contested services in this class is
required before proceeding to the comparison. The contested computer software for
commercial analysis and reporting in Class 42 refers to goods. The term used in the
Decision on Opposition No B 2 698 200 page: 4 of 8
first language of the contested EUTM application, namely software voor commerciële
analyse en rapportage in Dutch, has the same significance. However, the scope of
protection granted in Class 42 can only include services. Indeed, before the
limitation, the corresponding wording of the contested services was design of
computer machine and computer software for commercial analysis and reporting.
Therefore, it can be reasonably assumed that the applicant seeks protection for
services rendered in relation to such computer software, for example design
services. In any event, the contested services in relation to computer software for
commercial analysis and reporting; all aforementioned only in the field of
telecommunications are included in the broader category of the opponent’s design,
installation, maintenance, updating and rental of computer software in Class 42.
Therefore, they are identical.
The contested monitoring of network systems; computer system analysis; technical
data analysis services; troubleshooting of computer software problems; computer
security system monitoring services; quality control; all aforementioned only in the
field of telecommunications have some relevant connections with the opponent’s
design and development of computer hardware and software in Class 42. The
contested information technology services are rendered by the same undertakings
that commonly provide also computer programming and hardware manufacture
services. These services are of interest to the same public who look for them on the
same channels. Therefore, they are similar.
b) 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 or similar are
mainly directed at business customers with specific professional knowledge or
expertise in relation to information and telecommunication technologies.
Given the specialised nature, potentially high price and the specific terms and
conditions of the purchased goods and services, it is considered that the public’s
degree of attention is, on the whole, higher than average.
c) The signs
MyIvision INVISION
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).
Decision on Opposition No B 2 698 200 page: 5 of 8
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.
For reasons related to the conceptual comparison of the signs, as set out below, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
English-speaking part of the public in the relevant territory.
Moreover, as regards the earlier mark, notwithstanding the fact that a part of the
public may read it as ‘MYLVISION’, another part of the public will read it as
‘MYIVISION’, the third letter being an ‘i'. The examination of the opposition will
proceed in relation to that part of the public.
Although both marks are composed of one verbal element, the relevant consumers,
when perceiving a verbal sign, will break it down into elements that suggest a
concrete meaning, or that resemble words that they already know (13/02/2007,
T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion,
EU:T:2008:33, § 58).
In both signs the public will discern the word ‘VISION’ and associate it with ‘the act,
faculty, or manner of perceiving with the eye; sight, the image on a television screen,
the ability or an instance of great perception, especially of future developments’ or
with ‘dreams and pictures or images conjured up in dreams’. In contrast, the goods or
services at issue are not directly or even potentially related to the visual perception.
Nor do they concern images or sight. At most, this concept could vaguely allude to
the idea that a network controlling or monitoring system for example can give ‘the
ability of perception, especially for future developments’. However, it has to be borne
in mind that this word is unusual and sufficiently imaginative in the context of the
relevant goods and services, to the extent that the allusion does not materially affect
its distinctiveness. Therefore, and despite the applicant’s argument, it is considered
that this word enjoys an average degree of inherent distinctiveness in both signs.
In the earlier mark, the word ‘MY’ will be perceived as indicating a personal
connection with something. This word is used in marketing language for making
goods or services more appealing by referring to them as one’s personal preference.
Therefore, this element is weak for the goods and services of the earlier mark. On
the other hand, the letter ‘I’ may be associated with, inter alia, the first person
singular pronoun, a stylish way of writing the word ‘eye’ (on account of their aural
identity and the presence of the word ‘VISION’), a reference to something
‘interactive’, ‘intelligent’ or related to the ‘internet’, etc. As there are many ways of
perceiving this letter, none of which is entirely convincing, the Opposition Division
finds it reasonable to assume that a significant part of the public will in all likelihood
not attach any specific semantic content to it and will see it as fanciful.
Decision on Opposition No B 2 698 200 page: 6 of 8
The contested sign is likely to be perceived as a coined term stemming from the word
‘VISION’ and conjoined with the prefix ‘IN’, the latter indicating, inter alia, ‘in, into,
towards, within, on’ or ‘having an intensive or causative function’. Although the prefix
is fanciful for the goods and services at issue, its role is to intensify the concept
conveyed by the word ‘VISION’.
Conceptually, although the signs as a whole do not have any clear or evident
meaning for the relevant public, the shared, distinctive concept ‘VISION’ creates a
conceptual similarity between them. Given the limited impact of the word ‘MY’ of the
earlier mark and the absence of a specific semantic content from the other
differentiating elements, it is considered that the signs are similar to a high degree.
Visually, the signs coincide in the distinctive letter string ‘VISION’, present in the
same position in both signs. However, they differ in that the earlier mark begins with
the letters ‘MYI’, whereas the contested sign begins with ‘IN’.
While, generally, the beginning of words has a greater impact on the consumer, the
specific circumstances of the case may allow a different conclusion to be drawn
(07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present
case, notwithstanding the difference in the initial parts of the signs, their endings do
coincide and, furthermore, they occupy a large proportion in each sign.
Since the word ‘MY’ has a limited impact, the public’s attention will be diverted from
the beginning of the earlier mark to the ‘IVISION’ part that only has one-letter
difference (namely the additional ‘N’) vis-à-vis the contested sign, ‘INVISION’. Such a
difference might even pass unnoticed by the average consumer. Therefore, the signs
are similar to an average degree.
Aurally, the pronunciations of the signs coincide in the sounds corresponding to the
distinctive letter string ‘VISION’. As regards the earlier mark, irrespective of how exactly
the public may pronounce the letter ‘I’ (like the word ‘eye’, either separated or coalesced
with the preceding word ‘MY’), the sounds corresponding to the letters ‘MY’ and ‘I’ form
a point of aural difference vis-à-vis the contested sign’s initial part, ‘IN’. However, the
limited impact of the word ‘MY’ has to be taken into consideration. Therefore, and given
that the shared sound sequence ‘VISION’ accounts for a significant part of the
pronunciation of each sign, the signs are similar to an average degree.
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. In the present case, the earlier trade mark as a whole has no
clear 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, despite the presence of a weak element in the mark as
stated above in section c) of this decision.
Decision on Opposition No B 2 698 200 page: 7 of 8
e) 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, the degree of
similarity between the marks and between the goods or services identified (eighth
recital of the EUTMR). 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).
In the present case, the signs show a strong similarity on a conceptual level, and are
similar to an average degree from the visual and phonetic perspectives. Although
there are certain points of difference between the signs, they are not of such an
impact as to counteract the similarities and to enable the relevant public to safely
distinguish between them.
As regards the additional letter ‘N’ appearing in the contested sign, the Opposition
Division finds that, when encountering the signs, the average consumer who only
rarely has the chance to make a direct comparison between different marks might
overlook the difference residing in the letter string ‘I(N)VISION’. Indeed, 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).
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 and services covered are from the
same or economically linked undertakings.
It constitutes frequent practice nowadays for companies to make small variations of
their trade marks, for example by altering their typeface, or adding terms or elements
to them, in order to name new lines of products, or to create a modernised version of
the mark. Given the identity and similarity of the goods and services at issue, and the
addition of the weak element ‘MY’ to the letter string ‘I(N)VISION’, it is likely that a
significant part of the relevant public will perceive that the earlier mark denotes a
product line which is related to the main brand and can be personalised or tailored to
one’s specific needs.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public who perceives the earlier mark as ‘MYIVISION’.
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 and there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 14 181 325.
It follows that the contested trade mark must be rejected for all the contested goods
and services.
Decision on Opposition No B 2 698 200 page: 8 of 8
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Angela DI BLASIO
Solveiga BIEZA
María Belén
IBARRA DE DIEGO
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.