KAIROS PLANET | Decision 2756487
Date Published: Oct 2, 2017
OPPOSITION No B 2 756 487
Kairos Digital Analitycs and Big Data Solutions S.L., C/ Claudio Coello 78, 28001 Madrid, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Caspella International s.r.o., Tvrdeho 643, Letnany, 19900 Prague, Czech Republic (applicant), represented by Atanas Kostov, Tsoko Kableshkov str. No 10 fl.2, 4000 Plovdiv, Bulgaria (professional representative).
On 26/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 756 487 is upheld for all the contested services.
2. European Union trade mark application No 15 189 913 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 189 913. The opposition is based on European Union trade mark registration No 15 148 943. 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 services
The services on which the opposition is based are the following:
Class 35: Advertising, marketing and promotional services; Public relations services; Product demonstrations and product display services; Trade show and exhibition services; Loyalty, incentive and bonus program services; Provision of advertising space, time and media; Distribution of advertising, marketing and promotional material; Advertising, marketing and promotional consultancy, advisory and assistance services; Commercial trading and consumer information services; Auctioneering services; Business assistance, management and administrative services; Accountancy, book keeping and auditing; Administrative data processing; Human resources management and recruitment services; Clerical services; Business consultancy and advisory services; Rental of office machines; Business analysis, research and information services; Market research; Collection and systematization of business data.
Class 42: IT services; Software development, programming and implementation; Computer hardware development; Hosting services and software as a service and rental of software; Rental of computer hardware and facilities; IT consultancy, advisory and information services; IT security, protection and restoration; Data duplication and conversion services, data coding services; Science and technology services; Medical and pharmacological research services; Engineering services; Surveying and exploration; Architectural and urban planning services; Natural science services; Earth science services; Testing, authentication and quality control; Design services.
The contested services are the following:
Class 35: Providing consumer product information relating to software; Wholesale services in relation to computer software; Providing consumer product advice relating to software; Compilation of computer databases; Advertising services provided via a data base; Management and compilation of computerised databases; Updating of business information on a computer data base; Collection and systematisation of information into computer databases; Provision of commercial business information by means of a computer database; Business information services provided on-line from a computer database or the internet; On-line advertising on a computer network; On-line advertising on a computer network; Compilation of directories for publishing on global computer networks or the internet; Arranging commercial transactions, for others, via online shops; On-line advertising on a computer network; On-line advertising on a computer network; Online community management services; On-line data processing services; On-line advertising on a computer network; Arranging commercial transactions, for others, via online shops; Market research; Marketing forecasting; Provision of information relating to marketing; Marketing consulting; Direct marketing; Promotional marketing; Marketing services; Database marketing; Market analysis and research; Development of marketing strategies and concepts; Analysis of market research data and statistics; Development and implementation of marketing strategies for others; Promotion, advertising and marketing of on-line websites; Analysis of market research data.
Class 38: Transmission of database information via telecommunications networks; Telecommunications services to obtain information from data banks; Transmission and reception [transmission] of database information via the telecommunication network; Leasing of access time to a computer database; Rental of access time to a database server; Telecommunications services between computer networks; Communication services over computer networks; Providing access to global computer networks and other computer networks; Providing access to computer networks; Message sending via computer networks; Transmission of information via computer networks; Transmission of information via national and international networks; Transmission and reception of messages by means of worldwide computer networks; Providing access to data in computer networks; Leasing of telecommunication lines for access to computer networks; Transferring and disseminating information and data via computer networks and the Internet; Providing access to and leasing access time to computer networks; Providing user access to computer programmes in data networks; Rental of access time to global computer networks; Rental of access time to global computer networks; Transferring information and data via computer networks and the Internet; Provision of access to an electronic marketplace [portal] on computer networks; Providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; On-line communication services; Transmission of information on-line; Provision of on-line communications services; Providing access to on-line databases; Providing access to multimedia content online; Transfer of information and data via online services and the Internet; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Provision of telecommunication access to video and audio content provided via an online video-on-demand service; Providing on-line chatrooms and electronic bulletin boards for transmission of messages amongst users.
Class 42: Software engineering; Maintenance of software; Computer software consultancy; Computer software design; Software development; Updating of computer software; Updating of computer software; Software engineering; Computer software consultancy; Computer software consultancy; Updating of computer software; Computer software consultancy; Design of graphic software systems; Computer software consultancy; Computer software consultancy; Computer software design; Design and writing of computer software; Rental of software; Computer software design and updating; Updating and upgrading of computer software; Software design for others; Programming of software for Internet platforms; Configuration of computer networks by software; Configuring computer hardware using software; Development and maintenance of computer software; Installation of database software; Programming of software for inventory management; Hosting services and software as a service and rental of software; Computer software consultancy; Computer software consultancy; Software design for others; Computer software design; Installation and maintenance of computer programs; Development of software for secure network operations; Creation of computer programmes for data processing; Maintenance of software for Internet access; Development of computer software application solutions; Computer software consultancy; Rental of computer hardware and computer software; Computer programming and software design; Design, maintenance and up-dating of computer software; Design, maintenance and up-dating of computer software; Maintenance and upgrading of computer software; Professional advisory services relating to computer software; Research and consultancy services relating to computer software; Creating, maintaining, and modernizing computer software; Consultancy relating to software for communication systems; Consultancy relating to the updating of software; Design, development and programming of computer software; Updating of software for data processing; Consultancy in the field of security software; Advisory services relating to computer software design; Computer hardware and software consultancy; Rental of software; Rental of software for Internet access; Conducting feasibility studies relating to computer software; Research, development, design and upgrading of computer software; Design and development of computer software for logistics; Programming of software for information platforms on the Internet; Rental of financial management software; Design services relating to computer hardware and to computer programmes; Feasibility study services relating to computer software; Computer hardware and software consultancy; Computer hardware and software consultancy; Maintenance and updating of software for communication systems; Research relating to the development of computer software; Programming of software for e-commerce platforms; Research in the field of computer programs and software; Installation and maintenance of database software; Installation, maintenance and repair of software for computer systems; Development of computer software for use with programmable controllers; Design and development of electronic database software; Programming of software for importing and managing data; Programming of operating software for computer networks and servers; Rental of software for data processing; Installation and customisation of computer applications software; Rental of computer hardware and computer software; Installation and maintenance of Internet access software; Design, maintenance, rental and updating of computer software; Installation, maintenance, repair and servicing of computer software; Designing computer software for controlling self-service terminals; Development of software for compression and decompression of multimedia contents; Programming of EDP software; Development and maintenance of computer database software; Advisory and information services relating to computer software; Rental of computer database software; Installation, maintenance and updating of database software; Technical consultancy relating to the installation and maintenance of computer software; Technical consultancy relating to the application and use of computer software; Research relating to the development of computer programs and software; Programming of computer software for evaluation and calculation of data; Rental of database management software; Design and development of computer software for process control; Diagnosing computer hardware problems using software; Consultancy and information services relating to computer software design; Design of computer machine and computer software for commercial analysis and reporting; Design and development of software for database management; Design and development of operating software for computer networks and servers; Rental of operating software for computer networks and servers; Design and development of software for importing and managing data; Software engineering services for data processing programs; Rental of computer software, data processing equipment and computer peripheral devices; Development of software for data and multimedia content conversion from and to different protocols; Providing temporary use of non-downloadable computer software for tracking freight over computer networks, intranets and the internet; Providing temporary use of online, non-downloadable computer software for use in broadcast monitoring applications; Providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for preparing invoices over computer networks, intranets and the internet; Providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; Providing temporary use of non-downloadable software for analyzing financial data and generating reports; Design of computer databases; Recovery of computer data; Design of computer databases; Installation of database software; Programming of software for database management; Preparation of computer programs for data processing; Installation, maintenance and updating of database software; Rental of computer database software; Reconstruction of database systems for others; Rental of a database server (to third parties); Rental of database management software; Providing on-line information in the field of technological research from a computer database or the Internet; Computer network services; Consultancy services relating to computer networks; Configuration of computer systems and networks; Computer network design for others; Updating of home pages for computer networks; Integration of computer systems and networks; Implementation of computer programs in networks; Configuration of computer networks by software; Administration of user rights in computer networks; Information services relating to the development of computer networks; Creating and updating of home pages for computer networks; Providing information about the design and development of computer software, systems and networks; Provision of security services for computer networks, computer access and computerised transactions; Rental of operating software for computer networks and servers; Design and development of operating software for computer networks and servers; Consultancy services relating to computer networks using mixed software environments; Programming of operating software for computer networks and servers; Providing temporary use of on-line non-downloadable operating software for computer networks and servers; Providing temporary use of non-downloadable computer software for tracking freight over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for preparing invoices over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for preparing shipping documents over computer networks, intranets and the internet; Safety technological testing services; Professional consultancy relating to computer security; Hosting on-line web facilities for others; Provision of on-line support services for computer program users; Provision of on-line support services for computer program users; Maintenance of websites and hosting on-line web facilities for others; Creating electronically stored web pages for online services and the internet; Providing on-line information in the field of technological research from a computer database or the Internet; Providing temporary use of on-line non-downloadable operating software for computer networks and servers; Providing temporary use of on-line non-downloadable software for web site development; Providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; Interactive hosting services which allow users to publish and share their own content and images online; Providing temporary use of on-line non-downloadable software for importing and managing data; Providing temporary use of on-line non-downloadable software for database management.
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.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
Contested services in Class 35
Marketing consulting; market research (listed twice) are identically contained in both lists of services (including synonyms).
The contested advertising services provided via a data base; on-line advertising on a computer network (contained five times in the specification); promotion and advertising of on-line websites are included in the broad category of the opponent’s advertising services. Therefore, they are identical.
The contested marketing of on-line websites; promotional marketing; development of marketing strategies and concepts; development and implementation of marketing strategies for others; provision of information relating to marketing; direct marketing; marketing forecasting; marketing services; database marketing are included in the broad category of, or overlap with, the opponent’s marketing services. Therefore, they are identical.
The contested market analysis; analysis of market research data; analysis of market research data and statistics are included in the broad category of, or overlap with, the opponent’s market research. Therefore, they are identical.
The contested management and compilation of computerised databases; compilation of computer databases; updating of business information on a computer data base; collection and systematisation of information into computer databases; on-line data processing services; business information services provided on-line from a computer database or the internet; online community management services; provision of commercial business information by means of a computer database; compilation of directories for publishing on global computer networks or the internet are included in the broad category of, or overlap with, the opponent’s business administrative services. Therefore, they are identical.
The contested providing consumer product advice relating to software; providing consumer product information relating to software are included in the broad category of the opponent’s advisory and assistance services. Therefore, they are identical.
The contested wholesale services in relation to computer software; arranging commercial transactions, for others, via online shops (listed twice in the specification) are included in the broad category of, or overlap with, the opponent’s commercial trading. Therefore, they are identical.
Contested services in Class 38
The contested transmission of database information via telecommunications networks; telecommunications services to obtain information from data banks; transmission and reception [transmission] of database information via the telecommunication network; leasing of access time to a computer database; rental of access time to a database server; telecommunications services between computer networks; communication services over computer networks; providing access to global computer networks and other computer networks; providing access to computer networks; message sending via computer networks; transmission of information via computer networks; transmission of information via national and international networks; transmission and reception of messages by means of worldwide computer networks; providing access to data in computer networks; leasing of telecommunication lines for access to computer networks; transferring and disseminating information and data via computer networks and the Internet; providing access to and leasing access time to computer networks; providing user access to computer programmes in data networks; rental of access time to global computer networks; rental of access time to global computer networks; transferring information and data via computer networks and the Internet; provision of access to an electronic marketplace [portal] on computer networks; providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; on-line communication services; transmission of information on-line; provision of on-line communications services; providing access to on-line databases; providing access to multimedia content online; transfer of information and data via online services and the Internet; providing online chatrooms for the transmission of messages, comments and multimedia content among users; provision of telecommunication access to video and audio content provided via an online video-on-demand service; providing on-line chatrooms and electronic bulletin boards for transmission of messages amongst users are all related to telecommunications and therefore are similar to the opponent’s IT services in Class 42. Telecommunication services are those that allow people to communicate with one another by remote means. The opponent’s IT services in Class 42 is a very broad category and involves, inter alia, the design and development of the technical equipment or the necessary programs and platforms required to meet the full range of customer demands, including communication, obtaining information and socialising in electronic environments. The services under comparison have the same purpose. They can have the same producers and distribution channels. Furthermore, they are complementary.
Contested services in Class 42
The contested computer software consultancy (contained nine times in the specification); consultancy relating to software for communication systems; consultancy relating to the updating of software; consultancy services relating to computer software ; consultancy services relating to computer networks using mixed software environments; professional consultancy relating to computer security; consultancy services relating to computer networks; technical consultancy relating to the installation and maintenance of computer software; technical consultancy relating to the application and use of computer software; consultancy and information services relating to computer software design; computer hardware and software consultancy (contained three times in the specification); consultancy in the field of security software; advisory and information services relating to computer software; advisory services relating to computer software design; professional advisory services relating to computer software; conducting feasibility studies relating to computer software; feasibility study services relating to computer software; information services relating to the development of computer networks; providing information about the design and development of computer software, systems and networks; providing on-line information in the field of technological research from a computer database or the Internet (contained twice in the specification); provision of on-line support services for computer program users (contained twice in the specification) are identically contained in the opponent’s list of services (including synonyms) or they are included in the broad category of, or overlap with, the opponent’s IT consultancy, advisory and information services. Therefore, they are identical.
The contested design, maintenance and up-dating of computer software (contained twice in the specification); software engineering (contained twice in the specification); updating of computer software (contained three times in the specification); creation of computer programmes for data processing; computer software design (contained three times in the specification); computer programming and software design; computer software design and updating; software design for others (contained twice in the specification); research services relating to computer software; installation of database software; software development; preparation of computer programs for data processing; software engineering services for data processing programs; updating of software for data processing; updating and upgrading of computer software; installation, maintenance and updating of database software; installation and maintenance of computer programs; maintenance of software; maintenance of software for Internet access; maintenance and upgrading of computer software; maintenance and updating of software for communication systems; design, development and programming of computer software; design and development of computer software for logistics; design and development of electronic database software; designing computer software for controlling self-service terminals; design and development of software for importing and managing data; design and development of computer software for process control; design and development of operating software for computer networks and servers (contained twice in the specification); design and development of software for database management; design of graphic software systems; design and writing of computer software; implementation of computer programs in networks; creating, maintaining, and modernizing computer software; research, development, design and upgrading of computer software; programming of software for inventory management; programming of software for database management; programming of software for information platforms on the Internet; programming of software for e-commerce platforms; programming of EDP software; programming of software for Internet platforms; programming of software for importing and managing data; programming of computer software for evaluation and calculation of data; programming of operating software for computer networks and servers (contained twice in the specification); installation of database software; installation and maintenance of database software; installation, maintenance and repair of software for computer systems; installation and customisation of computer applications software; installation and maintenance of Internet access software; installation, maintenance, repair and servicing of computer software; installation, maintenance and updating of database software; research relating to the development of computer software; research in the field of computer programs and software; research relating to the development of computer programs and software; development of software for data and multimedia content conversion from and to different protocols; development and maintenance of computer database software; development of computer software for use with programmable controllers; development and maintenance of computer software; development of software for secure network operations; design of computer software for commercial analysis and reporting; development of computer software application solutions; design services relating to computer programmes; design of computer databases (contained twice in the specification); development of software for compression and decompression of multimedia contents are identically contained in the opponent’s list of services (including synonyms) or they are included in the broad category of, or overlap with, the opponent’s software development, programming and implementation. Therefore, they are identical.
The contested safety technological testing services; provision of security services for computer networks, computer access and computerised transactions; diagnosing computer hardware problems using software; recovery of computer data; reconstruction of database systems for others; administration of user rights in computer networks are included in the broad category of, or overlap with, the opponent’s IT security, protection and restoration. Therefore, they are identical.
The contested design of computer machine for commercial analysis and reporting; computer network services; computer network design for others; integration of computer systems and networks; configuration of computer networks by software (contained twice in the specification); configuring computer hardware using software; configuration of computer systems and networks; design services relating to computer hardware are included in the broad category of, or overlap with, the opponent’s computer hardware development. Therefore, they are identical.
The contested rental of software (contained twice in the specification); rental of computer software (contained four times in the specification); rental of computer database software (contained twice in the specification); rental of software for internet access; rental of financial management software; rental of database management software; rental of database management software; rental of software for data processing; rental of operating software for computer networks and servers; rental of a database server (to third parties); rental of operating software for computer networks and servers; providing temporary use of non-downloadable computer software for tracking freight over computer networks, intranets and the internet (listed twice); providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; providing temporary use of online, non-downloadable computer software for use in broadcast monitoring applications; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet (contained twice in the specification); providing temporary use of non-downloadable software for analyzing financial data and generating reports; providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; providing temporary use of on-line non-downloadable operating software for computer networks and servers; providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; providing temporary use of non-downloadable computer software for preparing invoices over computer networks, intranets and the internet (listed twice); providing temporary use of non-downloadable computer software for preparing shipping documents over computer networks, intranets and the internet; providing temporary use of on-line non-downloadable operating software for computer networks and servers; providing temporary use of on-line non-downloadable software for web site development; providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; providing temporary use of on-line non-downloadable software for importing and managing data; providing temporary use of on-line non-downloadable software for database management are identically contained in the opponent’s list of services (including synonyms) or they are included in the broad category of, or overlap with, the opponent’s rental of software. Therefore, they are identical.
The contested hosting services and software as a service; maintenance of websites and hosting on-line web facilities for others; hosting on-line web facilities for others; interactive hosting services which allow users to publish and share their own content and images online; creating and updating of home pages for computer networks; creating electronically stored web pages for online services and the internet; updating of home pages for computer networks are identically contained in the opponent’s list of services (including synonyms) or they are included in the broad category of, or overlap with, the opponent’s hosting services and software as a service. Therefore, they are identical.
The contested rental of computer hardware (contained twice in the specification); rental of data processing equipment and computer peripheral devices are identically contained in the opponent’s list of services (including synonyms) or they are included in the broad category of the opponent’s rental of computer hardware and facilities. Therefore, they are identical.
- 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 and business customers with specific professional knowledge or expertise. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
The degree of attention can vary from average to above average, as some of the services are rather expensive and/or highly specialised.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a figurative sign composed of three words, ‘KAIROS’, ‘DIGITAL’ and ‘SOLUTIONS’. These words are depicted in standard upper case letters, except for the stylised letter ‘O’ of the word ‘KAIROS’. The letter ‘O’ resembles a lifebelt, at least for part of the public. The word ‘KAIROS’ is in orange and is much larger than the other verbal elements. The words ‘DIGITAL’ and ‘SOLUTIONS’ are in black and are placed just beneath the word ‘KAIROS’.
The contested sign is a figurative sign made up of two words, ‘KAIROS’ and ‘PLANET’. The word ‘KAIROS’ is depicted in stylised upper case characters. The word ‘PLANET’ is much smaller and is written below the word ‘KAIROS’ in standard upper case letters. In addition, the contested sign contains a figurative element resembling an image of the Earth with an arrow. All of these verbal and figurative elements are placed on a dark-blue rectangular background.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The coinciding element ‘kairos’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for example in the United Kingdom, Ireland and Malta. The other words, namely ‘digital’, ‘solutions’ and ‘planet’, will also be understood in English.
The word ‘kairos’ will be understood as ‘a propitious moment for decision or action’ (information extracted from Oxford English Dictionary on 30/05/2017 at www.en.oxforddictionaries.com/definition/us/kairos), ‘digital’ as ‘relating to, using, or storing data or information in the form of digital signals’ (information extracted from Oxford English Dictionary on 30/05/2017 at www.en.oxforddictionaries.com/definition/us/digital), ‘solutions’ (being the plural form of ‘solution’) as ‘a means of solving a problem or dealing with a difficult situation’ (information extracted from Oxford English Dictionary on 30/05/2017 at www.en.oxforddictionaries.com/definition/us/solution) and ‘planet’ as ‘a celestial body moving in an elliptical orbit around a star’ (information extracted from Collins English Dictionary on 30/05/2017 at www.en.oxforddictionaries.com/definition/us/planet). The expression ‘digital solutions’ would be understood as meaning ‘electronic technology that allows problems to be solved’.
The element ‘kairos’, present in both marks, will be understood by the relevant public as explained above. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. It should be emphasised that this word is seldom used in common parlance.
The remaining elements, namely ‘digital’ and ‘solutions’ (of the earlier mark), will be associated with the field of technology. Bearing in mind that the relevant services are technology-related, these verbal elements are non-distinctive for these services.
The word ‘planet’ of the contested sign is depicted in very small letters. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The figurative elements of both signs (i.e. the stylised letter ‘o’ of the earlier mark and the device in the contested sign depicting the Earth with an arrow) are distinctive, as they are not descriptive, allusive or otherwise weak for the relevant services.
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).
The element ‘KAIROS’, due to its colour, position and/or size, is the dominant element in both signs, as it is the most eye-catching. It is also the most distinctive element in the earlier mark.
Visually, the signs coincide in the word ‘KAIROS’, which is the dominant and distinctive element in both signs. However, they differ in other verbal elements, which are either non-distinctive (i.e. ‘DIGITAL’ and ‘SOLUTIONS’) or distinctive (i.e. ‘PLANET’), and some figurative elements, which are distinctive (as explained above).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛k-a-i-r-o-s’, present identically in both signs. This verbal element is distinctive. The pronunciation differs in the sound of the letters ‘d-i-g-i-t-a-l’ and ‘s-o-l-u-t-i-o-n-s’ of the earlier sign and ‘p-l-a-n-e-t’ of the contested mark. As explained above, these verbal elements are either non-distinctive or distinctive.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘kairos’, included in both signs, will be associated with the meaning explained above. This verbal element is distinctive. To that extent, the signs are conceptually highly 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 some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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.
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.
As concluded above, the contested services are partly identical and partly similar to the opponent’s services. The signs are visually similar to an average degree, and they are aurally and conceptually highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness. Considering that the public in question includes professionals, and that their degree of attention will vary from average to above average, the signs could be confused with each other.
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).
It should be noted that the coinciding word ‘kairos’ is the most distinctive of the earlier mark and the dominant element in both signs, and that consumers tend to remember the similarities rather than the dissimilarities between signs.
Consequently, the Opposition Division finds that the similarities between the signs are not outweighed by the differences.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 148 943. 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.
It follows that the contested trade mark must be rejected for all the contested services.
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
Lena | Michal KRUK | Judit NÉMETH |
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.