Unifi | Decision 2721424

Date Published: Sep 25, 2017

OPPOSITION No B 2 721 424

Unify GmbH & Co. KG, Mies-van-der-Rohe-Str. 6, 80807 Munich, Germany (opponent), represented by Vossius & Partner, Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 Munich, Germany (professional representative)

a g a i n s t

Telemach širokopasovne komunikacije d.o.o., Cesta Ljubljanske brigade 21, 1000 Ljubljana, Slovenia (applicant), represented by Odvetniška Družba Pantelič in partnerji O.P. D.O.O., Poljanski nasip 6, 1000 Ljubljana, Slovenia (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 424 is upheld for all the contested services.

2.        European Union trade mark application No 15 203 458 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 15 203 458 for the figurative mark. The opposition is based on European Union trade mark registration No 9 911 851 for the word mark ‘Unify’. 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; optical electrotechnical and electronic apparatus and equipment for storing, recording, sending, transmission, receiving, reproduction and processing of sounds, signals, symbols and/or images, and for the integration of voice, image, text, data, multimedia and moving image communications on networks; apparatus for recording, processing, sending, transmission, relaying, storage and output of messages, information and data; communications computers, software; optical, electrotechnical and electronic apparatus for voice, image, text; data, multimedia and moving image communications devices, in particular for voice data communications, telephones, videophones, and telephone answering machines, dialling apparatus, domestic telephone apparatus, telephone branch exchanges; photocopying apparatus; telecommunications network equipment, including exchange and transmission apparatus, individual modules and components for this apparatus, including power supply apparatus; batteries, accumulators, power supply (transformers), transmission devices, including communications cables and optical fibres and associated connectors; apparatus for wireless transmission by means of infrared or radio; parts of all the aforesaid apparatus and equipment (included in class 9); installations consisting of a combination of the aforesaid apparatus and equipment.

Class 35: Advertising; business management; business administration; office functions; telephone answering for unavailable subscribers.

Class 37: Building construction; repair; installation services; repair of electrical apparatus for recording, sending, transmission, receiving, reproduction and processing of sounds, signals, symbols and/or images, and for the integration of voice, image, text, data, multimedia and moving image communications on networks, apparatus for recording, processing, sending, transmission, relaying, storage and output of messages, information and data, communications computers, optical, electrotechnical and electronic apparatus for voice, image, text, data, multimedia and moving image communications devices, in particular for voice data communications, telephones, videophones, and telephone answering machines, dialling apparatus, domestic telephone apparatus, telephone branch exchanges photocopiers, telecommunications networks, comprising exchange and transmission apparatus, individual modules and components for this apparatus, including power supply apparatus, batteries, accumulators, power supply (transformers), transmission devices, including communications cables and optical fibres and associated connectors, apparatus for wireless transmission by means of infrared and radio, parts of all the aforesaid apparatus and equipment, installations consisting of a combination of the aforesaid apparatus and equipment.

Class 38: Telecommunications; telecommunications services for the operation of equipment for telecommunications, in particular telecommunications by means of company and carrier networks (voice, data and mobile radiotelephone networks) for the electronic transmission of data, images, sound and documents via computer terminals, electronic mailing (e-mail services), facsimile transmission, short messaging services (sms), call relaying services (teleconference services); renting of telecommunication appliances and devices and of telecommunication networks.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Technical consultancy in the setting up and operation of telecommunications installations and telecommunications networks; development, planning and design of telecommunications and information processing services and equipment, equipment for the electronic storage and retrieval of data and telecommunications networks, and equipment and parts therefore; development, generation and renting of data processing programs; repair of computer software.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services.

Class 38: Telecommunication services.

Class 42: Design services; IT services; Science and technology services.

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

The elements ‘in particular’ and ‘including’, used in the opponent’s list of goods and services in Classes 9, 37 and 38 indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, ‘Nu-Tride’, EU:T:2003:107).

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.

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 35

The contested marketing and promotional services are included in the opponent’s broader category of advertising. Therefore, they are identical.

The contested services advertising and business management are identically contained in both lists of services.

The contested business administrative services are identical to the opponent’s business administration services, since they are synonyms.

The contested business assistance services; business analysis, research and information services are included in the opponent’s broader category of business management. Therefore, they are identical.

The contested commercial trading and consumer information services are similar to a high degree to the opponent’s business management. Business management services are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc. On the other hand, commercial trading is, in its broadest sense, the operating of a business for profit. Consumer information services are services which provide information and consultation on the products sold/services provided. All these services have a similar purpose and nature as they are involved in the running and operating of businesses and may provide advice and information to enable a company to function successfully in a given market segment. In addition, these services are likely to be rendered in combination with each other through the same channels and providers and to the same end users. They are, therefore, considered to be highly similar.

Contested services in Class 38

The contested telecommunication services are identically contained in both lists of services.

Contested services in Class 42

The contested design services include, as a broader category, the opponent’s design of telecommunications and information processing services and equipment, equipment for the electronic storage and retrieval of data and telecommunications networks, and equipment and parts therefore. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

Technology can be defined as the products, tools and processes used to accomplish tasks in daily life. Science is a systematic way of acquiring knowledge about a particular field of study. The contested science and technology services are provided by, inter alia, engineers in the fields of science, technology and industry. They are specialised in nature and are likely to be provided to businesses developing specific technologies. They cover, among other services, many related to computer software. Therefore, they may overlap with the opponent’s development, generation of data processing programs. Thus, they are considered identical.

Information technology (IT) is the application of computers and telecommunications equipment to store, retrieve, transmit and manipulate data, often in the context of a business or other enterprise. In its broadest sense, IT refers to anything related to computing technology, such as networking, hardware, software or the Internet. Thus, the contested IT services include, as a broader category, among others, the opponent’s development, generation of data processing programs. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to a high degree are directed at the public at large but mainly at business customers with specific professional knowledge or expertise. As some of the relevant services are highly specialised and can be expensive, the degree of attention ranges from average to high.

3. The signs

Unify
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 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.

In some languages, such as French, Italian and Spanish, the verbal elements of the marks in conflict are not meaningful and therefore distinctive. Moreover, even if a small part of speakers of these languages could understand anything, the marks would evoke the same distinctive concept for this public. Finally, the pronunciation is identical for both signs in these languages. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Italian- and Spanish-speaking parts of the relevant public.

The applicant focuses its argumentation on languages spoken in the Balkans, since it pretends that its mark originates and would be used mainly in the geographical area of Central and South-Eastern Europe where its services are provided. Notably, it argues that it is incomprehensible and not clear why the opponent has connected the contested sign with English language, as neither the applicant’s country’s official language is English nor are there any English speaking countries in the area where the sign would be used.

The applicant’s arguments must be set aside, since it has to be recalled that the contested sign is a European trade mark application and that its protection has therefore been requested for all the countries and languages of the European Union. Moreover, the examination of the likelihood of confusion carried out by the Office is a prospective examination. For this reason, specific marketing strategies are not relevant. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.

The earlier word mark consists of the verbal element ‘Unify’. The protection of word marks comprises upper case and lower case, a mixture of the two and a variety of common fonts.

The contested sign is a figurative mark in which the verbal element ‘unifi’ is depicted in slightly stylised white lower case letters and enclosed in a grey and dark grey background which may evoke a speech bubble. This figurative element is less distinctive, since it is of decorative nature and resembles a label. Consequently, it has only a limited impact.

On the other hand, this sign has no element which could be considered more dominant (visually eye-catching) than other elements.

Visually, the earlier mark and the only verbal element of the contested sign coincide in their vast majorities, namely in their first four letters out of five, namely ‘unif’. They only differ in the last letter, namely ‘y’ in the earlier mark and ‘i’ in the contested sign.

The signs further differ for the contested sign in the slightly stylised typeface and in the figurative element, which are however less distinctive.

Moreover, it has to be recalled that 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).

Likewise, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the earlier mark and the only verbal element of the contested sign share more than their beginning, namely their first four letters out of five.

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

Aurally, the pronunciation of the signs coincides in the identical sound generated by the strings of letters ‘unify’ in the earlier mark and ‘unifi’ in the contested sign. Indeed, the letters ‘y’ and ‘i’ will be pronounced identically in the relevant territories.

Therefore, the signs are aurally identical.

Conceptually, the background of the contested sign may be perceived as a speech bubble by the public. In any case, it is a basic figurative element which resembles a label and which is less distinctive.

As regards the earlier mark ‘unify’ and the only verbal element ‘unifi’ of the contested sign, they do not have any meaning for the public in the relevant territories. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, it cannot be completely overlooked that a part of the relevant public could associate the terms ‘unifi’ and ‘unify’ with the concept of ‘unify’, namely ‘to make or become one; unite’, since these two words are close to the Spanish, French and Italian verbs ‘unificar’, ‘unifier’, ‘unificare’. Moreover, these two terms are pronounced identically and therefore may convey the same meaning when perceived aurally.

Therefore, in such a case the signs are conceptually similar at least to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Moreover, the Court has set out the essential principle that 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 the 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).

In the present case, the contested goods are partly identical and partly similar to a high degree.

The signs are aurally identical and they coincide visually to a large extent, namely in their first four letters out of five.

Moreover, the signs are at least highly similar conceptually for a part of the public.

The remaining differences lie only in a less impacting and less distinctive figurative element which may be perceived as a label.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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).

Based on all the foregoing, it is considered that there are strong coincidences between the signs with a decisive impact. Taken together with the identity and high similarity of the services, these similarities are clearly enough to outweigh the few differences, and may cause at least a part of the public to believe that the conflicting services come from the same undertaking or economically linked undertakings, despite a possible higher level of attention for some services.

Thus, the Opposition Division considers that the marks under comparison convey similar overall impressions and that a likelihood of confusion between cannot be safely excluded for the French-, Italian- and Spanish-speaking parts of the relevant public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s earlier European Union trade mark registration No 9 911 851. 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

Sandra IBAÑEZ

Steve HAUSER

Frédérique SULPICE

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.