iX | Decision 2638826 - TELECITYGROUP INTERNATIONAL LIMITED v. iXmap Services GmbH & Co. KG
Date Published: Sep 25, 2017
OPPOSITION No B 2 638 826
Telecitygroup International Limited, Masters House, 107 Hammersmith Road, London W14-0QH, United Kingdom (opponent), represented by Novagraaf UK, Suite 8b, Lowry House, 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative)
a g a i n s t
iXmap Services GmbH & Co. KG, Peter-Henlein-Str. 5, 93128 Regenstauf, Germany (applicant), represented by Christian Schleinkofer, Waldweg 1, 93128 Regenstauf, Germany (professional representative).
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 638 826 is upheld for all the contested services, namely:
Class 38: Telecommunication services.
Class 42: Design services; IT services; Testing, authentication and quality control; Science and technology services.
2. European Union trade mark application No 14 678 171 is rejected for all the contested services. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 678 171, namely against all the services in Classes 38 and 42. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 028 837. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 028 837.
- The services
The services on which the opposition is based are, inter alia, the following:
Class 38: Rental of modems and telecommunications equipment; telecommunication services; rental of access time to a computer database; communication services for the electronic transmission of data; communication services for accessing a database; communication services for the exchange of data In electronic form; computer data transmission services; databank interconnection services; services for the electronic transmission of data; providing access to computer data bases; provision of communication facilities for the interchange of data by electronic means; provision of communication facilities for the interchange of digital data; provision of electronic data links; remote transmission of data by means of telecommunications; rental of access time to a computer database; rental of data communication apparatus; rental of data communication installations; transmission of data; provision of Internet access; providing access to the Internet; Internet portal services; Internet provider services; Internet based telecommunication services; providing telecommunication connections to the Internet and databases; Information, advisory and consultancy services relating to the aforesaid services.
Class 42: Rental of computers and software; software design services; design of Internet sites and websites and pagers; computer and information technology consultancy services; rental of data processors; data security services; information, advisory and consultancy services relating to the aforesaid services; computerised data storage services.
The contested services are the following:
Class 38: Telecommunication services.
Class 42: Design services; IT services; Testing, authentication and quality control; Science and technology 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.
Contested services in Class 38
Telecommunication services are contained in both lists of services and they are, therefore, identical.
Contested services in Class 42
The contested design services include, as a broader category, the opponent’s design of Internet sites and websites. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested IT services include, as a broader category, the opponent’s computer and information technology consultancy services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested testing, authentication and quality control are typical activities that are carried out by specialists and consultants in technical fields. In particular, authentication is the action of establishing something as genuine or valid. Testing and quality control are procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. As these kinds of control activities are applicable during and after the process of development and production of a number of goods and services, they also apply to the opponent’s computer and information technology consultancy services, where the quality of the product and process and its results could be controlled by the same undertaking. Consequently, the services under comparison can have the same providers, relevant public and distribution channels. Therefore, these services are considered similar.
The contested science and technology services are services provided by, inter alia, engineers and technical experts in technological and scientific fields. They are similar to the opponent’s software design services, as they can have the same nature, providers and relevant public.
- 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 as well as at business customers with specific professional knowledge or expertise in the IT and telecommunication fields. The degree of attention may vary from average to high, depending on the specialised nature of the services.
- The signs
CLOUD -IX | |
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
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 earlier mark is a word mark, ‘CLOUD -IX’. The word ‘CLOUD’ is an English term used nowadays in the IT and telecommunication fields to designate a public or semi-public space on transmission lines for the transmission of all kinds of data over the internet. In view of the above, the element ‘CLOUD’ of the earlier mark is considered descriptive of the services in question, since it merely indicates that they are provided using cloud technology (in the case of the relevant services in Class 38) or are focused on or related to this technology (in the case of the relevant services in Class 42). Between the word ‘CLOUD’ and the verbal element ‘IX’ there is a dash, which will be overlooked by a part of the relevant public due to its position and size. The following comparison will focus on this part of the public. The element ‘IX’ will be perceived by a part of the relevant public as referring to the Roman numeral nine. On the other hand, it cannot be ruled out that another part of the relevant public, on which the following comparison will focus, will perceive the element ‘IX’ as the combination of the letters ‘IX’. As the relevant public will not attach any meaning to this combination of letters, the verbal element ‘IX’ is considered distinctive in relation to the relevant services.
The contested sign is a figurative mark composed of the white stylised letters ‘i’ and ‘X’ in lower and upper case, respectively, characterised by a short extension of one of the two crossing stems on the top right. The letters ‘iX’ are placed within a red square.
The element ‘iX’ of the contested sign, will not be perceived by any part of the consumers as the Roman numeral nine, given the graphic depiction of the letters ‘iX’. This element has no meaning for the relevant public and, therefore, it is considered distinctive.
The red square of the contested mark is a commonplace shape used in labels and has, therefore, a purely decorative nature.
Moreover, 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).
Neither sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘IX’. However, they differ in the stylisation and colours of the letters and the red square background of the contested sign and in the verbal element ‘CLOUD’ of the earlier mark. As explained above, the word ‘CLOUD’ of the earlier mark lacks distinctiveness. Therefore, it plays a very limited role in the evaluation of the visual similarity between the signs, as does the square background of the contested sign, which is merely decorative. Moreover, the stylisation of the letters ‘iX’ of the contested sign is not so striking that it establishes a significant visual difference between the signs.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘IX’, present identically in both signs. The pronunciation differs in the sound of the word ‘CLOUD’ of the earlier mark, which has no counterpart in the contested sign. Bearing in mind the weight attributed to ‘CLOUD’ in the earlier mark, it is concluded that the signs are aurally similar to a high degree.
Conceptually, the combination of the letters ‘IX’ has no meaning, whereas the word “CLOUD” does, as stated above. Consequently, the signs are not conceptually similar.
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 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 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 non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested services are partly identical and partly similar to the opponent’s services. The signs are visually similar to an average degree and aurally similar to a high degree because they coincide in the letters ‘IX’, which form the only verbal element in the contested sign and the only distinctive element in the earlier mark. The fact that the marks are not conceptually similar must be put in the context of this lack of similarity arising from the presence of a non-distinctive element in the earlier mark, namely the word ‘CLOUD’.
The signs differ in length, as the earlier mark consists of two words and the contested sign includes just one verbal element, and this may influence the effect of the differences between them. However, this difference in the additional word ‘Cloud’ of the earlier mark results from a non-distinctive element.
The other differences created by the figurative element and the stylisation of the contested sign are based on elements of a purely decorative nature that have a limited impact on consumers, for the reasons explained above in section c).
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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). The contested sign could easily be perceived as referring, for example, to a new line of services from the opponent.
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).
Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between the signs arising from the coincidence in the distinctive letters ‘IX’. Therefore, the relevant public, including that part displaying a high degree of attention, when encountering the signs in relation to identical or similar services is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
In its observations, the applicant argues that that there are hundreds of trade marks including the element ‘IX’ and that, therefore, the letters ‘IX’ themselves cannot be protected. The Opposition Division notes that the applicant, in support of its arguments, did not submit any evidence reflecting the situation of trade marks including the element ‘IX’ in the market. In other words, without any data concerning the presence of trade marks including the element ‘IX’ in the market, it cannot be assumed that all such trade marks have been effectively used. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 028 837. It follows that the contested sign must be rejected for all the contested services.
As earlier United Kingdom trade mark registration No 3 028 837 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
María Clara IBÁÑEZ FIORILLO | Angela DI BLASIO | 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.