rankingCoach | Decision 189/2016-5

Date Published: May 1, 2018

DECISION

of the Fifth Board of Appeal

of 12 January 2017

In Case R 1189/2016-5

rankingCoach GmbH

Brügelmannstr. 3

50679 Köln

Germany

Applicant / Appellant

represented by Wilde Beuger Solmecke, Kaiser-Wilhelm-Ring 27-29, 50672 Köln, Germany

v

RANKKIN NETWORK, S.L.U.

C/Germans Miquel, s/n - Polígon Empordà Internacional

17469 Vilamalla (Girona)

Spain

Opponent / Respondent

represented by Clarke, Modet Y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain

APPEAL relating to Opposition Proceedings No B 2 512 500 (European Union trade mark application No 13 695 234)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

  1. By an application filed on 29 January 2015, rankingCoach GmbH (‘the applicant’) sought to register the figurative mark

 

for the following list of goods and services:

Class 9 – Computer software, recorded; computer software applications, downloadable; data processing programs;

Class 35 – Advertisement for others on the Internet; data compilation for others; business information for enterprises (provision of -); systemization of information into computer databases; compilation of information into computer databases; marketing assistance; dissemination of advertising for others via the internet; provision of computerised advertising services; provision of space on web-sites for advertising goods and services; updating of advertising information on a computer data base; business promotion services provided by audio/visual means; promotion services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; services to determine the audience affected by advertisements; development of marketing strategies and concepts; sales promotion; advertising services provided via the internet; search engine marketing services; online advertisements; search engine optimisation; planning services for advertising; planning of marketing strategies; placing advertisements for others; promotional marketing; sales promotion for others; promoting the sale of the services [on behalf of others] by arranging advertisements; promoting the goods and services of others; promotion, advertising and marketing of on-line websites; arranging and placing of advertisements; advertising, including on-line advertising on a computer network; advertising particularly services for the promotion of goods; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; publicity and sales promotion services; advertising, marketing and promotional services;

Class 42 – Consultancy with regard to webpage design; design of homepages and websites; development, design and updating of home pages; designing and developing webpages on the internet; design, creation, hosting and maintenance of internet sites for third parties; creating home pages for others; creation of internet web sites; web site design and creation services; designing and implementing web sites for others; design of home pages; maintenance of websites and hosting on-line web facilities for others; providing search engines for the internet; application service provider [asp], namely, hosting computer software applications of others; hosting computer sites [web sites]; hosting of websites; hosting of digital content on the internet; server hosting; rental of web servers; hosting websites on the internet; updating websites for others; operating search engines; rental of computer software; computer software design; updating of computer software; software engineering; designing of data processing programmes; writing of programs for data processing; consultancy in the field of computers.

  1. The application was published on 5 February 2015.
  2. On 22 April 2015, RANKKIN NETWORK, S.L.U. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods and services.
  3. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
  4. The opposition was based on the following earlier rights:
  • EUTM No 11 263 688 for the figurative mark

filed on 15 October 2012 and registered on 14 March 2013 for the following services:

Class 35 – Providing of advertising space on the internet; compilation and management of databases, marketing, advertising, promotion, market research and information provided via virtual communities; promotion of the goods and services of others via virtual communities; conducting of surveys via virtual communities, social networks, and computer and communications networks; purchaser to supplier matching rendered through virtual communities; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks;

Class 38 – Telecommunications, online directories and transmission of images;

Class 42 – Computer services provided via web pages with user-defined information; computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data.

  • EUTM No 10 841 922 for the figurative mark

filed on 26 April 2012 and registered on 24 September 2012for the following services:

Class 35 – Providing of advertising space on the Internet; compilation and management of databases, marketing, advertising, promotion, market research and information provided via virtual communities; promotion of the goods and services of others via virtual communities; conducting of surveys via virtual communities, social networks, and computer and communications networks; purchaser to supplier matching rendered through virtual communities; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 38 – Telecommunications, online directories and transmission of images.

Class 42 - Computer services provided via web pages with user-defined information; computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data.

  1. By decision of 29 April 2016 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods and services on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:
  • The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s European Union trade mark registration No 10 841 922.
  • The goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average, as some of the goods and services are technically advanced and highly specialised services, for example software engineering in Class 42.
  • Visually, the signs have the sequence of letters ‘RANKIN*’ in common. However, they differ in the additional letter ‘G’ and the word ‘COACH’ of the contested sign, as well as in the graphic depiction of both signs. 
  • Aurally, the pronunciation of the signs coincides in the sound of the syllables ‛RAN-KIN’, present identically in both signs. The pronunciation differs in the sounds of the letters ‛G’ and ‘COACH’ of the contested mark, which have no counterparts in the earlier sign. At least part of the Spanish-speaking public will not pronounce the letter ‘G’ and, therefore, for this part of the public, the pronunciation differs in the sound of the word ‛COACH’ of the contested sign.
  • Conceptually, the earlier sign will be meaningless for the Polish and Spanish-speaking parts of the public. The Polish and Spanish word ‘RANKING’ of the contested sign will be associated with the concept of classification. The English word ‘COACH’ is nowadays widely used and it will be associated with a trainer or tutor. The inverted comma or whistle of the contested sign will be perceived as such by the relevant public.
  • 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.
  • In view of the above, and particularly as the fully distinctive word ‘RANKIN’ of the earlier mark is entirely reproduced in the contested sign as its first verbal element, the Opposition Division is of the opinion that the similarities between the signs cannot be counteracted by their dissimilarities. The relevant public would believe that the goods and services found to be identical or similar to varying degrees, including those similar only to a low degree, came from the same undertaking or from economically-linked undertakings.
  • There is a likelihood of confusion on the part of the Polish and Spanish-speaking parts of the public and a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
  • The opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 841 922. It follows that the contested trade mark must be rejected for all the contested goods and services.
  • As the earlier right European Union trade mark registration No 10 841 922 leads to the success of the opposition and to the rejection of the contested mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent.
  1. On 29 June 2016, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside.
  2. The statement of grounds of the appeal was received on 12 August 2016.
  3. No observations in reply were filed.

Submissions and arguments of the applicant

  1. The arguments raised in the statement of grounds may be summarised as follows:
  • The opponent did not substantiate its earlier rights and submit further material, nor did it file observations to the communication of the applicant submitted on 9 November 2015. This alone should lead to the rejection of the opposition in its entirety.
  • While the comparison between the goods and services must be based on the parties’ lists submitted to the Office, the necessity of a global assessment requires the consideration of all further factors, which may play a role for determining an overall likelihood of confusion between the marks.

 Class 9

  • The applicant’s mark claims protection solely in classes relevant to its specific business activities, namely website optimization services. The applicant therefore selected Class 9 in relation to software products, including applications and data processing programs.
  • The opponent has no classes related to the goods and aims at a different field of commercial activities in the form of an information exchange network, which is based on a social/sociological project. Contrary to the Opposition Division’s assumption, no similarity exists between the applicant’s goods in Class 9 and the opponent’s services in Class 42. It is not clear how the mere offer of customized web pages, featuring user-defined or specified information, personal profiles etc. listed by the opponent may be sufficient to assume that its company would also be creating/developing software programs. If this was the case, there would practically always be a similarity between Classes 9 and 39, which contradicts the general principle of classification.
  • There are no factual indications to assume that the opponent may intend to create or produce software products in Class 9, so the assumption of the Opposition Division is too abstract and therefore unjustified:
  • It should be mentioned that the opponent’s internet presence has become practically non-existent and their website is currently not available.

Class 35

  • While there may be certain similarities in Class 35 as regards the services listed by the parties, the Opposition Division fails to consider the unambiguous focus of each party’s services within the class, which are, to a significant extent, clearly distinguishable. Services such as ‘conducting of surveys via virtual communities, social networks, purchaser to supplier matching rendered through virtual communities; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks’ are not present at all in the applicant’s list, which clearly lays the focus on advertisement for third parties on the internet and data compilation for others and marketing assistance. The conclusion of the Opposition Division that the mentioned terms in Class 35 overlap is incorrect. While the opponent’s list does also include ‘marketing, advertising and promotion’, the opponent has made it clear that those services are offered via virtual communities only, so they are inextricably connected to the term virtual community, leaving a different overall impression of the services in Class 35.
  • Considering this, the services in Class 35 are certainly not identical.

Class 42

  • The same applies to Class 42, where the distinction is even more unambiguous. The opponent’s services are limited to ‘computer services’ and ‘creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking’ whereas the applicant’s services relate to consultancy with regard to webpage design, development and updating of home pages etc. The specific choice of terms in the respective lists therefore clearly underscores the differences in both parties’ activities and therefore excludes any identity. As regards Class 42, even considering a similarity between the selected terms seems unjustified as most of the applicant’s terms are not present in the opponent’s list at all, specifically ‘consultancy, design, updating, creation of websites, providing search engines for the internet etc.’
  • Overall, it must be concluded that the applicant’s list contains goods in Class 9, which are entirely missing in the opponent’s list, while the remaining overlapping Classes 35 and 42 contain terms, which, assessed globally, leave a different general impression on the relevant public.

Visual similarity

  • As opposed to the applicant’s mark, the opponent’s figurative trade mark is easily distinguishable by its purple background colour and the white coloured letters integrated in it. Furthermore, the word component RANKIN differs significantly from the word component ‘rankingCoach’ used in the mark of the applicant. Not only is the opponent’s word component capitalized, but at the same time lacking the element ‘Coach’, which in turn constitutes a major part of the applicant’s mark in general. The importance of the word ‘Coach’ is unequivocally supported by the fact that the applicants mark also includes a clearly visible graphic element, resembling a whistle and therefore establishing a conceptual link to the term ‘Coach’ within the mark. The fonts used are also easily distinguishable.
  • Contrary to the Opposition Division’s observations, the verbal component in the applicant’s sign ‘ranking’ is less distinctive, albeit not entirely descriptive. Taken in isolation, it is not of great significance to the relevant public. This is because the applicant’s services relate to website optimization, which in turn improves the websites’ ranking. Although the element ‘ranking’ does require associative thinking on part of the public, its distinctiveness is generally lower.
  • The Opposition Division failed to establish that the contested mark’s distinctiveness is a result of the combination of verbal and figurative elements, specifically the ‘whistle’-like illustration, which is located in front of the verbal elements and massively influences the overall impression of the mark.
  • It is precisely the overall impression that eliminates any legally relevant similarity between the signs.
  • Overall, both marks lead to a very different general impression on the respective relevant public so a visual similarity, which could trigger a likelihood of confusion within the understanding of trade mark law, is simply not present.

Aural similarity

  • The conflicting signs further differ significantly in terms of aural perception. The applicant’s mark contains the generally well-known terms ‘ranking’ and ‘Coach’ combined with a graphically depicted whistle symbol on the left of the sign and therefore triggers a very specific general impression on the relevant public. The opponents mark lacks the term ‘Coach’ and only consists of the imaginary term ‘RANKIN’, which does not necessarily relate to ranking. The pronunciation of both marks, specifically due to the element ‘Coach’ differs significantly so that any sufficient similarity must be ruled out.
  • It is unclear how the Opposition Division concludes that a ‘part of the Spanish-speaking public would not pronounce the letter ‘‘G’’’. It certainly does not provide any substantiated evidence as to why this should be the case and what part of the Spanish-speaking public would indeed ignore the ‘G’.
  • Furthermore, ‘COACH’ leads to an entirely different overall pronunciation of the marks at issue so no aural similarity whatsoever may be assumed. The word ‘COACH’ consists of five letters, which corresponds to the earlier mark’s overall numbers of letters. The applicant’s mark is therefore a sign consisting of two separate words, the overall pronunciation of which differs significantly from the opponent’s shorter and solely imaginary word term ‘RANKIN’.

Conceptual similarity

  • As already stated, both marks present obvious differences in terms of conceptual meaning as well. While the applicant’s mark leaves a very specific, ‘coaching related’ general impression, the public cannot recognize any specific meaning in the opponent’s mark but would rather accept ‘RANKIN’ as an imaginary, non-existing term.

Distinctiveness

  • Lastly, the earlier trade mark only enjoys an average degree of distinctiveness, which confirms the overall non-existing likelihood of confusion.
  • The goods and services are overall easily distinguishable and there is certainly no identity.
  • Regardless of the above and even if the assumption of a similarity between the goods and services is to be accepted, the signs at stake are in no way similar, let alone almost identical but rather display clear differences, which in turn, specifically considering the lack of similarity between the goods and services as well as the merely average distinctiveness of the earlier trade mark, leads to the conclusion that a likelihood of confusion in light of all relevant circumstances, cannot be present.
  • The dissimilarities clearly prevail over the similarities, specifically considering the significant figurative element in the applicant’s mark and its position in front of the verbal part.
  • The Board of Appeal is kindly requested to annul the decision by the Opposition Division of 29 April 2016 as there is no likelihood of confusion between the marks at issue.

Reasons

  1. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Scope of the appeal

  1. In the present case, the contested decision was appealed in its entirety, therefore, the appeal at hand relates to whether or not the Opposition Division correctly assessed the likelihood of confusion between the marks in accordance with Article 8(1)(b) EUTMR.

Likelihood of confusion

  1. Under Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. A likelihood of confusion includes the likelihood of association with the earlier trade mark.
  2. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, furthermore, a likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
  3. The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether the consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).
  4. As the opposition was based on more than one earlier mark, the Board will, as done by the Opposition Division, initially examine the appeal based on the earlier European Union trade mark registration No 10 841 922.

Relevant public and territory

  1. In the present case, the opposition is based on two European Union trademarks, namely No 11 263 688 and No 10 841 922. The relevant territory, therefore, is the European Union.
  2. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (24/05/2011, T408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited). Furthermore, the relevant public is identified by means of the nature of the goods and services covered by the conflicting marks.
  3. The Board notes that the goods and services at hand do not fulfil basic needs and are not bought on a daily basis. According to the case-law of the General Court, the fact that a product or services is not purchased on a regular basis, leads one to assume that the public’s degree of attention will be rather high (13/10/2009, T146/08, Redrock, EU:T:2009:398, § 45). Furthermore, account must be taken of the fact that, in view of the nature of the goods and services concerned and in particular their price and their complex, technological character, not only the average consumer, but also professionals display a particularly high level of attention when purchasing them (08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37 and the case-law cited therein, and particularly, with respect to goods in Class 9 and their technical nature, 02/12/2008, T-212/07, Barbara Becker, EU:T:2008:544, § 26). That is particularly true about the contested services in Class 35 and most of the services in Class 42 which are aimed at the professional public.
  4. Consequently, although the relevant group of consumers are likely to encompass both average consumers as well as professionals, they are, given the nature of the goods and services, likely to display a relatively high level of attention.

Comparison of the goods and services

  1. The assessment of the similarity of the goods and services must take into account all relevant factors, which include their nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned (11/07/2007, T443/05, Piranam, EU:T:2007:219, § 37).
  2. Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. That implies that complementary goods or services can be used together, which presupposes that they are intended for the same public (12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48 and case-law cited therein).
  3. The reference point is whether the relevant public will perceive the goods or services concerned as having a commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).
  4. Initially the Board notes that the goods and services covered by a trade mark registration is defined by the wording of the list of goods and services itself for which it is registered (17/01/2012, T249/10, Kico, EU:T:2012:7, § 23).
  5. Contrary to what the applicant suggests, the wording of that list is not limited to the goods and services which are currently being provided by the parties. Particular circumstances in which the goods and services in question were marketed, such as marketing strategies or intentions, are not to be taken into account since these may vary in time depending on the wishes of the proprietors of the opposing marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 09/09/2008, T-363/06, Magic seat, EU:T:2008:319, § 63; 21/01/2016, T-846/14, SPOKeY, EU:T:2016:24, § 26). Consequently, the assessment of the goods and services must be based on the wording of the goods and services as applied for and registered.
  6. The goods and services to be compared in the present case are the following:

Earlier services

Contested goods and services

Class 35 – Providing of advertising space on the Internet; compilation and management of databases, marketing, advertising, promotion, market research and information provided via virtual communities; promotion of the goods and services of others via virtual communities; conducting of surveys via virtual communities, social networks, and computer and communications networks; purchaser to supplier matching rendered through virtual communities; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks;

Class 38 – Telecommunications, online directories and transmission of images;

Class 42 – Computer services provided via web pages with user-defined information; computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data.

Class 9 – Computer software, recorded; computer software applications, downloadable; data processing programs;

Class 35 – advertisement for others on the internet; data compilation for others; business information for enterprises (provision of -); systemization of information into computer databases; compilation of information into computer databases; marketing assistance; dissemination of advertising for others via the internet; provision of computerised advertising services; provision of space on web-sites for advertising goods and services; updating of advertising information on a computer data base; business promotion services provided by audio/visual means; promotion services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; services to determine the audience affected by advertisements; development of marketing strategies and concepts; sales promotion; advertising services provided via the internet; search engine marketing services; online advertisements; search engine optimisation; planning services for advertising; planning of marketing strategies; placing advertisements for others; promotional marketing; sales promotion for others; promoting the sale of the services [on behalf of others] by arranging advertisements; promoting the goods and services of others; promotion, advertising and marketing of on-line websites; arranging and placing of advertisements; advertising, including on-line advertising on a computer network; advertising particularly services for the promotion of goods; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; publicity and sales promotion services; advertising, marketing and promotional services;

Class 42 – Consultancy with regard to webpage design; design of homepages and websites; development, design and updating of home pages; designing and developing webpages on the internet; design, creation, hosting and maintenance of internet sites for third parties; creating home pages for others; creation of internet web sites; web site design and creation services; designing and implementing web sites for others; design of home pages; maintenance of websites and hosting on-line web facilities for others; providing search engines for the internet; application service provider [asp], namely, hosting computer software applications of others; hosting computer sites [web sites]; hosting of websites; hosting of digital content on the internet; server hosting; rental of web servers; hosting websites on the internet; updating websites for others; operating search engines; rental of computer software; computer software design; updating of computer software; software engineering; designing of data processing programmes; writing of programs for data processing; consultancy in the field of computers.

  1. Insofar as the applicant argues that its trade mark application claims protection solely in classes relevant to its specific business activities, namely website optimization services whereas the opponent aims at a different field of commercial activities in the form of an information exchange network, which is based on a social or sociological project, the Board takes the view that the comparison of the goods and services in question must be based on the wording used in the lists of goods and services and any actual or intended use not stipulated in the lists is not relevant for the comparison (see judgment 16/06/2010, T487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9

  1. As regards the contested goods in Class 9, namely ‘computer software, recorded; computer software applications, downloadable; data processing programs’, they must be considered similar to the opponent’s ‘computer services provided via web pages with user-defined information; computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data’ in Class 42 insofar as the opponent’s services involve development, provision and use of computer software and software applications. These goods and services may be provided by the same undertakings and through the same distribution channels. Furthermore, the goods and services can be either complementary (in particular, to the extent that the applicant’s specific computer services and providing temporary use of software applications) or in competition (to the extent that the opponent’s providing temporary use of non-downloadable software applications) can represent an alternative to the recorded or downloadable computer software and applications covered by the contested application.
  2. In addition, ‘data processing programs’ covered by the contested application in Class 9 are similar also to opponent’s ‘providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks’ since the latter services make use of the data processing programs and said goods and services can be provided by the same undertakings, through the same distribution channels and can be used by the same end-users.  
  3. Insofar as the applicant argues that there are no factual indications to assume that the opponent may intend to create or produce software products in Class 9, the Board finds that the Office and indeed the Boards of Appeal in assessing a likelihood of confusion are confined in their assessment to the marks and goods and services as they appear in the application or registration and not the actual and effective commercial exploitation made of such marks (15/03/2012, T379/08, Wavy line, EU:T:2012:125, § 26).  

Contested services in Class 35

  1. The contested services ‘advertisement for others on the Internet; marketing assistance; dissemination of advertising for others via the internet; provision of computerised advertising services; provision of space on web-sites for advertising goods and services; updating of advertising information on a computer data base; business promotion services provided by audio/visual means; promotion services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; services to determine the audience affected by advertisements; development of marketing strategies and concepts; sales promotion; advertising services provided via the internet; search engine marketing services; online advertisements; search engine optimisation; planning services for advertising; planning of marketing strategies; placing advertisements for others; promotional marketing; sales promotion for others; promoting the sale of the services [on behalf of others] by arranging advertisements; promoting the goods and services of others; promotion, advertising and marketing of on-line websites; arranging and placing of advertisements; advertising, including on-line advertising on a computer network; advertising particularly services for the promotion of goods; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; publicity and sales promotion services; advertising, marketing and promotional services’ in Class 35 overlap with the ‘marketing, advertising, promotion, market research and information provided via virtual communities; Promotion of the goods and services of others via virtual communities’ in Class 35 to the extent that all the applicant’s services mentioned in this paragraph fall into advertising, marketing promotion or market research services and may be provided via virtual communities. Therefore, they are identical.
  2. When it comes to ‘data compilation for others; systemization of information into computer databases; compilation of information into computer databases’ covered by the contested application in Class 35, they overlap with the opponent’s ‘compilation and management of databases provided via virtual communities’ in Class 35 and are therefore identical.
  3. The contested ‘business information for enterprises (provision of -)’ is identical to the opponent’s ‘providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks’ to the extent that the information about products may fall into category of the business information likely to be sought by the enterprises. The business information about products is often retrieved from searchable databases and provided on computer and communication networks.

Contested services in Class 42

  1. The contested services in Class 42, namely ‘consultancy with regard to webpage design; design of homepages and websites; development, design and updating of home pages; designing and developing webpages on the internet; design, creation, hosting and maintenance of internet sites for third parties; creating home pages for others; creation of internet web sites; web site design and creation services; designing and implementing web sites for others; design of home pages; maintenance of websites and hosting on-line web facilities for others; providing search engines for the internet; application service provider [asp], namely, hosting computer software applications of others; hosting computer sites [web sites]; hosting of websites; hosting of digital content on the internet; server hosting; rental of web servers; hosting websites on the internet; updating websites for others; operating search engines; rental of computer software; computer software design; updating of computer software; software engineering; designing of data processing programmes; writing of programs for data processing; consultancy in the field of computers’ overlap with the ‘computer services provided via web pages with user-defined information’ covered by the earlier mark in the same class and are therefore identical.
  2. By arguing that the opponent’s services are limited to ‘computer services’ and ‘creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking’ whereas the applicant’s services relate to consultancy with regard to webpage design or development and updating of home pages, the applicant seems to ignore the fact that virtual communities which create space for interaction, discussion and networking are usually organised on websites and homepages. Many commercial websites include various features such as search tools, live chats or browser windows for posting comments.  
  3. Insofar as the applicant contends that the services in Classes 35 and 42, when assessed globally, leave a different general impression on the relevant public, the Board takes the view that in assessing the identity or similarity between the goods and services, it is necessary to take into account all relevant factors, which include their nature, their purpose and method of use, distribution channels, whether they are in competition with each other or complementary. Based on the comparison made above and taking into account that the goods and services at stake may come from the same undertakings, have a similar or identical purpose and method of use and can be distributed through the same distribution channels, the Board finds that the relevant public will perceive the goods and services concerned as having the same commercial origin. The applicant provided no evidence to demonstrate that consumers would not consider it normal that the goods and services under comparison come from a different commercial source.  

Comparison of the signs

  1. The global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarities between the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
  2. The signs to be compared are:

Earlier mark

Contested sign

  1. In the present case, both the marks at hand are figurative marks. The earlier mark is composed of the word ‘rankinʼ, in fairly standard white typeface containing both upper and lower case letters; the word component of the earlier mark is placed on a violet-coloured rectangular background. On the other hand, the contested mark consists of the expression ‘rankingCoachʼ depicted in standard, black, lower case letters, apart from the letter ‘C’, which is written in upper case. Due to the presence of the capital ‘C’ the verbal part of the contested sign will be split into two words, namely ‘rankingʼ and ‘Coachʼ. The verbal element of the contested sign is preceded by a figurative element which may be perceived as a large inverted comma or a whistle.
  2. Visually, the verbal elements of both signs begin with the identical sequence of letters ‘R-A-N-K-IN’. They differ in the absence of the letter ‘G’ and the word ‘Coach’ in the earlier sign. It should be borne in mind that consumers normally attach more importance to the beginnings of words (see, to that effect, 30/11/2011, T477/10, SE© Sports Equipment, EU:T:2011:707, § 54; 17/03/2004, T183/02 and T184/02, Mundicor, EU:T:2004:79, § 81). It is therefore likely that the public will pay more attention to the first word ‘ranking’ rather than to the subsequent term ‘Coach’ of the contested sign. It cannot be overlooked that the signs under comparison differ also in the typeface, colour of the respective backgrounds and the presence of the graphic device placed at the beginning of the contested sign. Nevertheless, due to the similarities of the verbal elements, the Board finds that the signs are visually similar.
  3. Aurally, the earlier mark will be pronounced in two syllables as ‘RAN-KIN’ whereas the contested sign will be in three syllables. The pronunciation of the signs coincides in the sound produced on the basis of the first six letters presented identically in both signs. On the other hand, the pronunciation differs in the sounds of the letter ‘G’ and ‘COACH’ of the contested sign. The Board finds that the letter ‘G’ will not be particularly stressed by the relevant public and hence will contribute only to a minor phonetic difference between the signs. Contrary to the applicant’s assertion, the graphic element placed on the left of the contested sign will not have any impact on the aural impression. Having regard to the identical beginnings of the signs, they are aurally similar to an average degree.
  4. Conceptually, the relevant consumers of the goods and services in question are likely to have at least an average knowledge of English and it is therefore likely that the term ‘rankinʼ of the earlier mark will be seen as a colloquial abbreviation of ‘rankingʼ which is the first verbal element of the contested sign. The verbal element ‘rankingʼ will be seen as a reference to classification or hierarchy in accordance with its English meaning. The English word ‘Coach’ is widely used and will be associated with a trainer or tutor. The inverted comma or whistle of the contested sign will be perceived as such by the relevant public. Consumers who perceive the graphical device as a whistle may make an association with the second verbal element of the contested sign. It follows that the signs are conceptually similar to the extent that the single verbal element of the earlier sign has the same meaning as the first verbal element of the mark applied for.
  5. Having regard to visual, phonetic and conceptual similarity between the signs, the Board finds that the signs are similar to an average degree.

Overall assessment of the likelihood of confusion

  1. A likelihood of confusion on the part of the public must be assessed globally which implies some interdependence between the relevant factors, and in particular a similarity between the marks under comparison and the goods and/or services under comparison. Accordingly, a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).
  2. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C39/97, Canon, EU:C:1998:442, § 18).
  3. The opponent did not explicitly claim that its earlier mark has acquired reputation or enhanced distinctiveness through intensive use. Therefore, the assessment of distinctiveness of the earlier mark will rest on its inherent distinctiveness. As indicated above, the relevant public is likely to perceive the verbal element of the earlier sign as a colloquial equivalent of the term ‘rankingʼ. This term may be allusive of the characteristics of the relevant goods and services insofar as it refers to classification or hierarchy which may have importance when it comes to services involving compilation of data, data processing programs or searchable indexes. It must be therefore considered that the earlier mark possesses a lesser than normal degree of distinctiveness.
  4. The differences between the signs have been fully analysed previously, where substantial visual and aural similarities between them were found. Given this background, despite the presence of other figurative and verbal elements present in the contested sign and notwithstanding a lower degree of the earlier mark’s inherent distinctiveness, the Board is convinced, that the identity of the first six letters of both signs (visually and aurally) combined with conceptual similarity makes a finding of confusion inevitable. In particular, the Board notes that it is settled case-law that coincidence in the initial part of the sign is particularly relevant since consumers generally pay more attention to the beginnings of marks rather than the ends so that it is likely to have a greater impact than the rest of the sign for which registration is sought (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64).
  5. There may be some figurative differences between the signs, as pointed out by the applicant, but the verbal elements will be considered more distinctive than the figurative ones, because the average consumer will more easily refer to the goods or services in question by quoting their name rather than by describing the figurative elements of the trade mark (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 05710/2011, T-118/09, Bloomclothes, EU:T:2011:563, § 34). Contrary to the applicant’s assertion, the figurative element placed in front of the contested sign’s verbal element will not massively influence the overall impression of the mark. As indicated above, this graphic part of the contested sign is not clearly discernible and the consumer would see this element essentially as decorative and not as identifying a particular commercial origin (15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 79).
  6. The relevant public rarely has a chance to make a direct comparison between the signs but must place his or her trust in the imperfect recollection of the marks in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26). Having regard to the identity or similarity between the goods and services, the aural, visual and conceptual characteristics of the conflicting signs and the consequent similar overall impressions which are present despite certain allusiveness of the coinciding elements ‘rankinʼ and ‘rankingʼ, consumers are likely to confuse the marks, including believing that the goods and services originate from the same undertaking or from economically-related undertakings. This also holds true despite the fact that the level of attentiveness of the relevant public will be higher than average. Given the degree of similarity found between the marks and the part identity, part similarity between the goods and services concerned, the fact that the relevant public’s level of attention may be above average is insufficient to exclude any likelihood of confusion (see, to that effect, 16/12/2010, T-363/09, Resverol, EU:T:2010:538, § 33 and the case-law cited).

Opponent’s procedural inactivity

  1. The applicant argues that after lodging the opposition the opponent failed to provide the Office with any substantiation or grounds on its initial position. As indicated by the applicant, it follows from Article 76(1) EUTMR that in proceedings relating to the relative grounds, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The fact that the opponent following its opposition decided not to participate actively in the proceedings cannot ipso facto lead to the rejection of the opposition. In absence of any provision to the contrary, the Board is bound to decide on the merits of the case without presuming the absence of cause of action.    

Conclusion

  1. For these reasons, and contrary to the applicant’s assertions, the contested decision is upheld in full.

Costs

  1. Since the appeal is dismissed and the applicant is the losing party, it must bear the opponent’s fees and costs in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.
  2. Pursuant to Article 85(6) EUTMR the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 93(1) EUTMR, which amount to EUR 550 as specified in Rule 94(2) and (7)(d) CTMIR, irrespective if they have actually been incurred. With respect to the costs of the opposition procedure, the contested decision already contains a decision allocating and fixing the costs; this remains unchanged. Any final decision fixing the amount of costs shall be enforceable pursuant to Article 86 EUTMR.

Order

On those grounds,

THE BOARD

hereby:

  1. Dismisses the appeal;
  2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550.

Signed

G. Humphreys

Signed

A. Kralik

Signed

A. Szanyi Felkl

Registrar:

Signed

H.Dijkema

12/1/2017, R 1189/2016-5, rankingCoach (fig.) / RANKIN (fig.) et al.

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