Sherpa | Decision 2747858
Date Published: Sep 28, 2017
OPPOSITION No B 2 747 858
Núcleo de Comunicaciones y Control, S.L., Avenida de la Industria, 24, 28760 Tres Cantos (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
Jo de Baerdemaeker, Gounodstraat 8/31, 2018 Antwerpen, Belgium (applicant).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 747 858 is upheld for all the contested goods.
2. European Union trade mark application No 15 387 954 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 387 954. The opposition is based on the Spanish trade mark registration No 2 187 342. 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 goods
The goods on which the opposition is based are the following:
Class 9: Systems for the treatment of information, namely supervision and control systems.
The contested goods are the following:
Class 9: Typeface fonts recorded on magnetic media; downloadable printing fonts; software; computer software packages; recorded computer software; application software; computer graphics software; data communications software; education software; interactive computer software; downloadable software.
Firstly, with regard to the opponent’s goods in Class 9, the English translation submitted, systems for the treatment of information, namely supervision and control systems, requires some clarification in relation to the word ‘namely’. Since the original wording in Spanish reads sistemas para el tratamiento de la informacion y especialmente sistemas de supervision y control, the Opposition Division holds that the word ‘namely’ is not a correct translation of the Spanish word ‘especialmente’. This Spanish word can be correctly translated in English as ‘especially’.
Therefore, the Opposition Division considers that the opponent’s list of goods in Class 9 should be translated as systems for the treatment of information, especially supervision and control systems.
The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods 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).
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 software; computer software packages; recorded computer software; application software; computer graphics software; data communications software; education software; interactive computer software; downloadable software are all software that can be recorded, downloadable, grouped in packages or can have different purposes such as educational or interactive purposes. They are similar to the opponent’s systems for the treatment of information as they have the same producers, distribution channels and they target the same consumers. Furthermore they are complementary.
The contested typeface fonts recorded on magnetic media; downloadable printing fonts are configuration files that instruct a piece of computer software on how to display characters and they need a computer (which is a part of data processing system) to be displayed. The opponent’s systems for the treatment of information are data processing systems for the collection, organization, storage and communication of information. Therefore, these contested goods are similar to a low degree to the opponent’s goods, as they are complementary and they have the same relevant public.
- The signs
SHERPA | Sherpa |
Earlier trade mark | Contested sign |
Since both signs are word marks the differences in the use of lower or upper case letters are immaterial to the finding of identity. In fact, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Consequently, the marks are identical.
- Global assessment, other arguments and conclusion
The goods are similar to various degrees, the marks are identical.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Bearing in mind the above principle and considering the identity between the signs, the opposition is successful, as the identity between the marks is enough for the consumers to be confused about the commercial origin of the relevant goods, even of those found to be similar to a low degree.
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 Spanish trade mark registration No 2 187 342. It follows that the contested trade mark must be rejected for all the contested goods.
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 Belén IBARRA DE DIEGO | Angela DI BLASIO | María Clara IBÁÑEZ FIORILLO |
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.