ErasmusNet | Decision 2617291 - The European Union, represented by the European Commission v. Lexema
Date Published: Oct 11, 2017
OPPOSITION No B 2 617 291
The European Union, represented by the European Commission, Rue de la Loi, 200, 1049 Brussels, Belgium (opponent), represented by Office Freylinger S.A., 234, route d’Arlon, B.P. 48, 8001 Strassen, Luxembourg (professional representative)
a g a i n s t
Lexema, 60/2, Melita Street, Valletta 1122, Malta (applicant).
On 24/03/2017, the Opposition Division takes the following
1. Opposition No B 2 617 291 is upheld for all the contested services.
2. European Union trade mark application No 14 692 966 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the services of European Union trade mark application No 14 692 966. The opposition is based on international trade mark registration No 1 004 846 designating the European Union. 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 and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 35: Advertising; business management; business administration; office functions; dissemination of advertising material (leaflets, prospectuses, printed matter, samples); data compilation and systematization in a database; computer file management; employment agencies; public relations; dissemination of recruitment and advertising announcements; market studies; marketing research; opinion polling; price comparison services; compiling of statistics; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments.
Class 36: Charitable fund raising; financial sponsorship; financial information; information relating to insurance, financial affairs, monetary affairs and real estate affairs; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments.
The contested services, after a limitation requested by the applicant, are the following:
Class 35: Advertising, marketing and promotional services.
Class 36: Fundraising and sponsorship.
Contested services in Class 35
The contested advertising includes the opponent’s advertising; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
Marketing is the action or business of promoting and selling products or services, including market research and advertising. As such, the contested marketing and promotional services include, as a broader category, the opponent’s advertising; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
Contested services in Class 36
The contested fundraising includes the opponent’s charitable fund raising; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. 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 sponsorship includes the opponent’s financial sponsorship; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
- 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 are directed at professionals in the fields of advertising, fundraising and sponsorship.
The degree of attention may vary from average to high depending on the terms and conditions of the services purchased.
- The signs
Earlier trade mark
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).
In the case of the earlier word mark, the word as such is protected, not its written form. 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). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters.
The contested sign is a figurative mark containing the verbal element ‘ErasmusNet’, written in blue stylised letters, except for the last letter ‘e’, which is yellow. The first letter ‘E’ and the letter ‘N’ are in upper case, while the other letters are in lower case. To the right of the verbal element, there is a figurative element composed of a set of overlapping square boxes in different colours. The contested sign, as a whole, is meaningless. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, although the contested sign depicts the single verbal element ‘ErasmusNet’, the upper case letters ‘E’ and ‘N’ will contribute to the identification of two distinct elements, ‘Erasmus’ and ‘Net’, even though there is no space between them.
As claimed by the parties, the verbal element ‘ERASMUS’, present in both signs, will be associated with the famous humanist Desiderius Erasmus or with the Erasmus academic programme, a European Union student exchange programme established in 1987, for which the opponent has a registered trade mark. Therefore, as this element is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The element ‘Net’ of the contested sign will be understood by at least the English-speaking part of the relevant public, and associated with the general concept of this English word, that is, a piece of open-meshed material of twine, cord or similar material. Therefore, at least for this part of the public, which perceives a meaning in the element ‘Net’, this element is less distinctive than the other, more distinctive, verbal element of the sign, ‘Erasmus’.
The contested figurative sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. The overlapping square boxes in different colours will be perceived as such by the relevant public and are, therefore, distinctive. However, 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).
Visually, the signs coincide in the verbal element ‘ERASMUS’, which forms the entire earlier mark and the first element of the contested sign, and which is also the most distinctive element for at least part of the relevant public, as explained above. However, they differ in the additional elements of the contested sign, namely the element ‘Net’, the figurative elements and the colours and stylisation of the letters.
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.
Therefore, weighing up the importance of all these elements, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‛E-RAS-MUS’, present identically in both signs. The pronunciation differs in the additional syllable ‛Net’ at the end of the contested sign, which has no counterpart in the earlier mark.
As the pronunciation of the signs differs in only one syllable, they have very similar rhythms and intonations. Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will both be associated with the meaning attached to the coinciding element ‘ERASMUS’, they 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The services are identical and the relevant public has a degree of attention that may vary from average to high. The earlier mark enjoys a normal degree of distinctiveness.
The signs are visually, aurally and conceptually highly similar on account of the reproduction of the entire earlier mark in the contested sign. In addition, the verbal element of the contested sign clearly contains two components, ‘Erasmus’ and ‘Net’, even though there is no space between them, as explained above. As a rule, there is an indication that two signs are similar when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26). The figurative elements of the contested sign, as described above, will have less impact on the consumer than the verbal element.
Consequently, even if the relevant public is capable of detecting certain visual, aural and conceptual differences between the two signs, the likelihood that it might associate the signs with each other in relation to identical services is very real. From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant professional public, even when displaying a high degree of attention, will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
The applicant raises the issue that the Erasmus programme is commonly referred to as ‘Erasmus+’, with a figurative element that should be considered in the comparison of the conflicting signs. However, it should be borne in mind that, in opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the signs must be carried out by reference to the signs as registered or applied for and not to their actual use in the market. Therefore, the argument raised by the applicant is irrelevant.
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 international trade mark registration No 1 004 846 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.
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
Marta GARCÍA COLLADO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.