OPPOSITION No B 2 398 223

Crisis Prevention Institute, Inc., 10850 W. Park Place Ste 600, Milwaukee, WI 53224, United States of America (opponent), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, London W1S 1YH, United Kingdom (professional representative)

a g a i n s t

Nextchance Stocks S.L., Paseo de la Castellana 259 D, Planta 43 Sur, 28046 Madrid, Spain (applicant), represented by Roeb y Cia S.L., Plaza de Cataluña 4 - 1º, 28002 Madrid, Spain (professional representative).

On 09/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 398 223 is partially upheld, namely for the following contested services:

Class 41: Educational services; Providing information on matters related to educational; Publishing, providing online electronic publications, not downloadable; Services for the publication of newsletters; Publishing by electronic means; Analyzing educational tests scores and data for others.

2. European Union trade mark application No 12 729 703 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 12 729 703, namely against some of the services in Classes 35, 38 and 41. The opposition is based on European Union trade mark registration No 4 767 349. The opponent invoked Article 8(1)(b) and Article 8(5) 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 services

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

Class 41: Educational and training services in relation to the management of aggressive, hostile and violent behaviour.

Class 44: Consultancy services in relation to the management of aggressive, hostile and violent behaviour.

The contested services are the following:

Class 35: Publication of publicity texts; Compilation of statistics.

Class 38: Providing access to online forums for the transmission of messages between computer users; Providing access to databases; Providing access via computer networks to a digital platform for the dissemination of information.

Class 41: Educational services; Providing information on matters related to educational; Publishing, providing online electronic publications, not downloadable; Services for the publication of newsletters; Publishing by electronic means; Analyzing educational tests scores and data for others.

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 publication of publicity texts belongs to the category of advertising services (services consisting of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity) whereas the contested compilation of statistics belong to the category of office functions (services related to the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’). These services are not similar to the opponent’s services in Classes 41 and 44 which consist in educational, training and consultancy services in relation to the management of aggressive, hostile and violent behaviour. These services have different natures and purposes and they are not provided by the same entities. Furthermore, they are neither in competition nor complementary.

Contested services in Class 38

The contested providing access to online forums for the transmission of messages between computer users; Providing access to databases; Providing access via computer networks to a digital platform for the dissemination of information are telecommunication services. They are not similar to the opponent’s services in Classes 41 and 44 which consist in educational, training and consultancy services in relation to the management of aggressive, hostile and violent behaviour. These services have different natures and purposes and they are not provided by the same entities. Furthermore, they are neither in competition nor complementary.

Contested services in Class 41

The contested educational services include, as a broader category, the opponent’s educational and training services in relation to the management of aggressive, hostile and violent behaviour. 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 providing information on matters related to educational overlap with the opponent’s educational services in relation to the management of aggressive, hostile and violent behaviour. Therefore, they are identical.

The contested analyzing educational tests scores and data for others overlap with the opponent’s educational services in relation to the management of aggressive, hostile and violent behaviour. Therefore, they are identical.

The contested publishing, providing online electronic publications, not downloadable; services for the publication of newsletters; publishing by electronic means are similar to the opponent’s educational and training services in relation to the management of aggressive, hostile and violent behaviour. These services are complementary since educational services providers usually provide (electronic) publications to participants as learning supports. Furthermore, these services target the same public and have in common the same providers and distribution channels.

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 are directed at the public at large whose degree of attention is average.

3. The signs

M.A.P.A.	MAPA PREFERENCIAL
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.

The earlier mark ‘M.A.P.A’ and the element ‘MAPA’ of the contested sign are meaningless in some languages such as English. In contrast, in English, the element ‘PREFERENCIAL’ of the contested sign will be associated with the English word ‘PREFERENTIAL’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark ‘M.A.P.A.’ consists of an acronym which has no meaning for the relevant public and is, therefore, distinctive.

The element ‘MAPA’ of the contested sign has no meaning and is, therefore, distinctive. However, the element ‘PREFERENCIAL’, given its high similarity to the English equivalent ‘preferential’ will be understood as meaning ‘of or involving preference; constituting a favour or privilege’ (definition extracted from Oxford dictionary at https://en.oxforddictionaries.com). This element is laudatory of services intended for a privileged part of the public and it is therefore considered weak for all the relevant services.

Visually, the signs coincide in the letters ‘M-A-P-A’, which form the entire earlier sign and the first distinctive and independent element of the contested sign. This is particularly relevant since consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. The signs differ to the extent that the letters of the earlier sign are separated with some dots and the contested sign contains the additional element ‘PREFERENCIAL’, which is, however, a weak element. Therefore, the signs are visually similar to an average degree.

Aurally, in spite of the dots, the earlier sign will be pronounced, by part of the public, /ma-pa/ since readable acronyms are usually pronounced as words. However, it cannot be excluded that part of the public will pronounce all the letters separately /m-a-p-a/ to the extent these letters are separated with some dots. The first element of the contested sign is pronounced /ma-pa/. Therefore, the pronunciation of the signs coincides in the sound of the letters ‛MA-PA’, present in both signs, at least for part of the public. The pronunciation differs in the sound of the element ‘PREFERENCIAL’ of the contested sign, which is weak in relation to the services at issue. Therefore, the signs are aurally highly similar for the part of the public that pronounces the earlier sign in two syllables /ma-pa/.

Conceptually, the earlier mark ‘M.A.P.A.’ and the element ‘MAPA’ of the contested sign have no meaning, whereas the element ‘PREFERENCIAL’ of the contested sign, which will be associated with ‘giving advantage or preference’, is weak for the relevant services. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The services are partly identical or similar and partly dissimilar. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and phonetically similar to a high degree, at least for part of the public. The coincidences between the signs lie in the distinctive and independent element ‘MAPA’ placed at the beginning of the contested sign where the attention of the public is focussed.

The differences between the signs are essentially confined to the additional element ‘PREFERENCIAL’ of the contested sign and to the dots placed after the letters of the earlier mark. However, the element ‘PREFERENCIAL’ is weak and the dots do not substantially alter the perception of the earlier sign from a visual point of view and phonetically, they will not be pronounced. Therefore, these differences are insufficient to enable the average consumer to safely distinguish between the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, when encountering the marks at issue, the relevant consumer may perceive the contested sign as a brand variation of the earlier sign, used to distinguish special services qualified as ‘preferential’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom for all the services for which it is registered.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 26/03/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 41: Educational and training services in relation to the management of aggressive, hostile and violent behaviour.

Class 44: Consultancy services in relation to the management of aggressive, hostile and violent behaviour.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 03/08/2016 the opponent submitted the following evidence:

• Extracts from the opponent’s website www.crisisprevention.com, explaining the opponent’s ‘MAPA’ services (Management of Actual or Potential Aggression).

• Spreadsheet with a breakdown of the marketing figures for 2010-2015.

• Tables in respect of the courses offered in the UK and Ireland since 2010. They show the number of people enrolled in each course.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes and the market share of the trade mark. The evidence concerning marketing figures consists of a document of unknown origin and/or nature and unsigned. This is also valid for the tables containing the courses offered, which in addition do not mention the earlier sign. The opponent has provided no evidence on how intensive and long-standing use of the mark has been in the relevant territory and on the proportion of the relevant section of the public who, because of the mark, identify the services as originating from the opponent. The opponent could have filed opinion polls or statements from relevant chambers of commerce and industry or other trade and professional associations. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Frédérique SULPICE

Boyana NAYDENOVA

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.