OPPOSITION No B 2 395 013

Flow consulting gmbh, Spörckenstr. 89, 29221 Celle, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte Partgmbb, Theodor-Heuss-Str. 1, 38122 Braunschweig, Germany (professional representative)

a g a i n s t

Unicorn a.s., V Kapslovně 2767/2, 130 00 Prague 3, Czech Republic (applicant), represented by Jiří Střelák, Šumberova 42, 162 00 Prague 6, Czech Republic (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 395 013 is partially upheld, namely for the following contested services:

Class 35: Automated data processing; Data management services; Computerised data processing; Compilation of information into computer databases; Computerised file management; Computerised stock management; Consultancy regarding business organisation and business economics; Secretarial services; Business administration; Clerical services; Business auditing; Taxation [accountancy] consultation; Commercial management; Business project management; Business planning services; Business strategy services; Business advisory and information services; Marketing services; Business consultancy services relating to marketing; Provision of information relating to marketing; Market research; Business analysis; Advertising; Advertising agencies; Dissemination of advertisements; Advertising; Sales promotion; Demonstration of goods; Publicity material rental; Publication of advertising literature; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way.

2. Community trade mark application No 12 828 323 is rejected for all the above services. It may proceed for the remaining services, namely the following:

Class 35: Corporate sales of computer programs, information and communications systems, computer applications, computers, computer components, telecommunications apparatus and audio-visual apparatus.

It may also proceed for all the non-contested goods and services in Classes 9, 36, 38 and 42.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of Community trade mark application No 12 828 323 namely against all the services in Class 35. The opposition is based on, inter alia, German trade mark registration No 30 2009 032 115. The opponent invoked Article 8(1) (b) CTMR. The opponent also invoked Article 8(4) CTMR for a company name used in the course of trade in Germany.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 2009 032 115.

1. The goods and services

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

Class 16: Printed matter, books, periodicals, magazines (periodicals), pamphlets; paper, cardboard and goods made of these materials (as far as included in class 16); stationery; packaging material (as far as Included in class 16); envelopes.

Class 35: Advertising, business management; business administration; office functions, business consultancy, also as change-management-consultancy (business organization consultancy); personnel recruitment, psychological testing for the selection of personnel, personnel management consultancy; employment agencies; marketing research; marketing studies; opinion polling; business organization consultancy, professional business consultancy; business management and organization consultancy; publication of publicity texts; public relations; business management consultancy.

Class 41: Education; providing of training; entertainment; education information;

organization of exhibitions for cultural or educational purposes; vocational guidance (education of training advice); correspondence courses; organization, arranging and conducting of conferences, congresses, concerts, workshops, colloquiums and symposiums as well as seminars; organization of competitions (teaching and education); personnel development (further education and training); coaching.

The contested services are the following:

Class 35: Automated data processing; Data management services; Computerised data processing; Compilation of information into computer databases; Computerised file management; Computerised stock management; Consultancy regarding business organisation and business economics; Secretarial services; Business administration; Clerical services; Business auditing; Taxation [accountancy] consultation; Commercial management; Business project management; Business planning services; Business strategy services; Business advisory and information services; Marketing services; Business consultancy services relating to marketing; Provision of information relating to marketing; Market research; Business analysis; Advertising; Advertising agencies; Dissemination of advertisements; Advertising; Sales promotion; Demonstration of goods; Publicity material rental; Publication of advertising literature; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Corporate sales of computer programs, information and communications systems, computer applications, computers, computer components, telecommunications apparatus and audio-visual apparatus.

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.

The earlier German trade mark No 302 009 032 115 is registered for the entire class headings of Class 35 of the Nice Classification. It was filed on 28/05/2009. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the general indications in these class headings will be interpreted following a literal approach, which seeks to give those indications their natural and usual meaning.

Contested services in Class 35

The contested Advertising; Publication of advertising literature, business administration; Consultancy regarding business organisation are identically contained in both specifications (including synonyms).

The contested Advertising agencies; Dissemination of advertisements; Sales promotion; Demonstration of goods; Publicity material rental; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way are all included in the opponent´s Advertising services. Therefore they are deemed identical.

The opposing 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. These 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.

The contested Consultancy regarding business economics; Business auditing; Taxation [accountancy] consultation; Commercial management; Business project management; Business planning services; Business strategy services; Business advisory and information services; Business analysis are various areas of business management. They are included in the broad category of the opponent´s Business management. Therefore these services are identical.

The contested Marketing services; Provision of information relating to marketing; Market research; Business consultancy services relating to marketing include, as a broader category, the opponent’s marketing studies; opinion polling. 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.

The applicant’s Automated data processing is the creation and implementation of technology that automatically processes data. The contested Data management service is the development and execution of architectures, policies, practices and procedures that properly manage the full data lifecycle needs of an enterprise. The Computerised data processing; Compilation of information into computer databases; Computerised file management; Computerised stock management are related types of data processing systems. They share the same purpose, relevant public and provider as the opponent’s business administration which is to organise people and resources efficiently so as to direct activities toward common goals and objectives. Therefore these services are found similar.

The same applies for the contested Secretarial services; Clerical services which typically refer to a variety of office and administrative support duties. They share the same purpose, relevant public and provider as the opponent’s business administration. Therefore these services are found similar.

The contested Corporate sales of computer programs, information and communications systems, computer applications, computers, computer components, telecommunications apparatus and audio-visual apparatus are the sales that a company makes to another company through its everyday transactions. They are also called business- to- business sales. These services are dissimilar to all of the opponent´s goods and services in classes 16, 35 and 41 as they do not coincide in nature; purpose and method of use. Moreover they are neither in competition with each other nor complementary to each other.

2. The signs

Flow Sales	FlowArt
Earlier trade mark	Contested sign

The relevant territory is Germany.

Visually, the signs are similar to the extent that they coincide in the word ‘FLOW’. On the other hand, they differ in the terms ‘SALES’ of the earlier mark and ‘ART’ of the contested sign.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘F/L/O/W’, present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the letters ‘S/A/L/E/S of the earlier mark and in the sound of the letters ‘A/R/T’ of the contested sign.

Conceptually, the earlier mark is made up of two English words ‘FLOW’ and ‘SALES’. The part of the German public which has knowledge of English will understand the meaning of the term ‘FLOW’ as ‘a continuous stream or discharge’ or a ‘continuous progression’. This term is used in German in English expressions like ‘cash flow’. This public will understand that the word ‘SALES’ refers to ‘the number of goods, products or services that a company sells within a certain time period' (information extracted from The Collins Dictionary on 05/11/2015 at [www.collinsdictionary.com]). So the earlier mark will be understood as a continuous progression of sales. However, for the part of the German public which does not understand English, these two terms, and therefore, the earlier mark are meaningless.

As regards the contested sign, the part of the German public which understands English will understand the meaning of the English term ‘FLOW’ which has already been defined above. The word ‘ART’ (die Art) is a German word which translates into English as ‘kind, type, sort, way, mode, manner, nature etc.’ (information extracted from the bilingual German dictionary Leo, on 05/11/2015 at [ https://dict.leo.org/ende/index_de.html#/]). However in this context the part of the public which understands English is more likely to think of ’the creation of works of beauty or other special significance; the exercise of human skill (as distinguished from nature) and ‘skill, method, facility, or knack or the system of rules or principles governing a particular human activity (Information extracted from The Collins Dictionary on 05/11/2015 at [www.collinsdictionary.com]). The contested mark ‘FLOW ART’ as a whole does not convey any particular message. For the part of the German public which does not understand English, this mark is also meaningless.

It follows from the above that the signs are conceptually similar for the part of the German public which understands English owing to the presence of the English term ‘FLOW’ in both signs. Neither of the signs has a meaning for the part of the German public which does not understand English. Consequently, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, as well as the conceptual similarity existing for a part of the relevant public, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The English term ‘SALES’ of the earlier mark refers, as mentioned above, to ‘the number of goods, products or services that a company sells within a certain time period'. Accordingly, this term indicates that the services in question can refer to sales promotions which are the set of marketing activities undertaken to boost sales of a particular product or service. It follows that this term refers to some of the contested services found to be identical to the opponent´s advertising and marketing studies. Therefore, the part of the German public who understands the meaning of that element will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue as regards the part of the German public that understands English. The term ‘SALES’ is endowed with a normal degree of distinctiveness as regards the part of the German public that does not understand English since it is meaningless for this part of the relevant public.

The English term ‘ART’ of the contested sign is defined among others, as ‘skill, method, facility, or knack or the system of rules or principles governing a particular human activity´’. It will be perceived by the part of the relevant German public which understands English as a laudatory term which can notably indicate that the services in question or the company that offers them have a certain talent in rendering their services for example. It follows that this term refers to the potential quality of the services in question or the company offering them and, therefore, the part of the German consumers who understand that element in the contested sign, will not pay as much attention to this weak element as to the other, more distinctive, element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue as regards the part of the German public that understands English. The word ‘ART’ is endowed with a normal degree of distinctiveness as regards the part of the German public that does not understand English since it does not have any meaning for this part of the public.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 in relation to any of the services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. 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 and similar are specialised services directed at the public at large and at business customers with specific professional knowledge or expertise. The level of attention will vary from average to high depending on the nature of the particular services concerned.

6. Series of marks

The opponent argues that the earlier trade marks, all characterised by the presence of the same word component, ‘flow’, constitute a ‘series of marks’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion in so far as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, ‘BAINBRIDGE’.

When the opposition to a Community trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

In the present case, besides the registration certificates of its earlier trade marks: ‘FLOW’, ‘FLOW CHANGE’, ‘FLOW SALES’, ‘FLOW LEADERSHIP‘, the opponent also submitted the following evidence to prove that it uses a series of ‘flow’ marks:

Annex 1: Excerpts from the opponent’s website www.flow.de introducing the services in the field of organisational and personnel development offered by the opponent under the trade marks ‘flow change’, ‘flow leadership’, ‘flow sales’ and ‘personal flow’.

Annex 2: An excerpt from the opponent’s website www.flow.de containing a list of selected customers (mainly German companies) that the opponent has worked with since 1993.

Annex 3: A number of invoices issued by the opponent to customers in Germany for consulting services (conducting of seminars, workshops, etc.). The invoices contain references to the marks ‘flow change’, ‘flow leadership’, ‘flow sales’ and ‘personal flow’. They are dated between 24/01/2013 and 27/10/2014.

Annex 4: Copies from various publications, in German, containing advertisements for the opponent’s services provided under ‘flow’ marks.

Annex 5: A copy of the article written by Dieter Kannenberg, Managing Director of flow consulting gmbh , describing the consultative approach offered by the opponent.

Having regard to the above-listed evidence, the Opposition Division considers that the opponent has proved that it uses a series of ‘flow’ marks and, moreover, that it uses this series of marks in the same fields as those covered by the contested trade mark. The evidence filed by the opponent shows use of all the earlier marks, namely ‘flow’, ‘flow change’, ‘flow leadership’, ‘flow sales’ and ‘personal flow’. The Opposition Division deems that these five trade marks are sufficient to form a ‘series of marks’.

Furthermore, all the marks used by the opponent are similar to the contested CTM application insofar as they contain the same element ‘flow’, which is distinctive for the services concerned. Therefore, it is reasonable to assume that the contested mark might be associated with the opponent’s series.

7. Global assessment, other arguments and conclusion

The contested services have been found to be partly identical, partly similar and partly dissimilar while the signs are similar insofar as they share the term ‘FLOW’, which is distinctive as regards all the relevant German consumers.

In this respect, it must be noted that the other verbal elements of the signs, namely the term ‘SALES’ of the earlier sign and the verbal element ‘ART’ of the contested sign are endowed with a low degree of distinctiveness for the part of the relevant German consumers that understands English.

It follows from all the above that the part of the German consumers that understands English will principally focus its attention on the verbal element ‘FLOW’ when it encounters or refers to the earlier mark or the contested sign and consider this distinctive verbal element as the principal identifier of both signs.

Indeed the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Therefore, despite the fact that the level of attention of some consumers is, in the present case, above average, the Opposition Division considers that the sharing of the distinctive term ‘FLOW’ can lead to a likelihood of confusion, notably a likelihood of association, as regards the part of the relevant German consumers that understand English.

Indeed, the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (for a definition of likelihood of association see judgments of 11/11/1997, ‘SABEL’ and of 29/09/1998, ‘Canon’). In the present case, the part of the German public that understands English may think, for instance, that the applicant’s mark is a brand variation of the earlier mark coming from the same undertaking or an economically-linked undertaking and intended for a specific line of services. In other words, these consumers may confuse the origin of the conflicting services.

Such an association between the marks at stake makes it all the more likely that some of the services in question are identical and similar. Indeed, 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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17). This principle of interdependence is crucial to the analysis of likelihood of confusion.

In its observations, the applicant argues that the starting word ‘FLOW’ of the earlier marks is not dominant. The Opposition Division understands that the applicant finds that this word has a low distinctive character given that there are many trade marks that are composed of or include this term. In support of its argument the applicant refers to several trade mark registrations of the word ‘FLOW’ alone or in combination with another word for services in classes 35 and 41 in the Community trade marks Register.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘FLOW’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above and owing to the opponent´s use of a series of ‘FLOW’ marks, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s German trade mark registration No 302 009 032 115.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to those of the earlier trade mark, namely:

Class 35: Automated data processing; Data management services; Computerised data processing; Compilation of information into computer databases; Computerised file management; Computerised stock management; Consultancy regarding business organisation and business economics; Secretarial services; Business administration; Clerical services; Business auditing; Taxation [accountancy] consultation; Commercial management; Business project management; Business planning services; Business strategy services; Business advisory and information services; Marketing services; Business consultancy services relating to marketing; Provision of information relating to marketing; Market research; Business analysis; Advertising; Advertising agencies; Dissemination of advertisements; Advertising; Sales promotion; Demonstration of goods; Publicity material rental; Publication of advertising literature; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way.

The opposition is not successful insofar as the remaining dissimilar services are concerned, namely:

Class 35: Corporate sales of computer programs, information and communications systems, computer applications, computers, computer components, telecommunications apparatus and audio-visual apparatus.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 2 068 360 ‘Flow’ for the following services, namely:

Class 35: Personnel consultancy, organisation consultancy in the field of personnel management and development, business management and organisation consultancy; marketing.

Class 41: Arranging and conducting of seminars, conferences and congresses; education information, elaboration of educational concepts and analysis of educational needs as well as conducting of education control; consultancy for the application of rhetorical methods and knowledge.

• German trade mark registration No 30 2009 032 114 ‘Flow Leadership’ for the following goods and services, namely:

Class 16: Printed matter, books, periodicals, magazines (periodicals), pamphlets; paper, cardboard and goods made of these materials (as far as included in Class 16); stationery; packaging material (as far as included in Class 16); envelopes.

Class 35: Advertising, business management; business administration; office functions, business consultancy, also as change-management-consultancy (business organisation consultancy); personnel recruitment, psychological testing for the selection of personnel, personnel management consultancy; employment agencies; marketing research; marketing studies; opinion polling; business organisation consultancy; professional business consultancy; business management and organisation consultancy; publication of publicity texts; public relations; business management consultancy.

Class 41: Education; providing of training; entertainment; education information; organisation of exhibitions for cultural or educational purposes; vocational guidance (education of training advice); correspondence courses; organisation, arranging and consulting of conferences, congresses, concerts, workshops, colloquiums and symposiums as well as seminars; organisation of competitions (teaching and education); personnel development (further education and training); coaching.

• German trade mark registration No 30 2009 032 113 ‘Flow Change’ for the following goods and services, namely:

Class 16: Printed matter, books, periodicals, magazines (periodicals), pamphlets; paper, cardboard and goods made of these materials (as far as included in Class 16); stationery; packaging material (as far as included in Class 16); envelopes.

Class 35: Advertising, business management; business administration; office functions, business consultancy, also as change-management-consultancy (business organisation consultancy); personnel recruitment, psychological testing for the selection of personnel, personnel management consultancy; employment agencies; marketing research; marketing studies; opinion polling; business organisation consultancy; professional business consultancy; business management and organisation consultancy; publication of publicity texts; public relations; business management consultancy.

Class 41: Education; providing of training; entertainment; education information; organisation of exhibitions for cultural or educational purposes; vocational guidance (education of training advice); correspondence courses; organisation, arranging and consulting of conferences, congresses, concerts, workshops, colloquiums and symposiums as well as seminars; organisation of competitions (teaching and education); personnel development (further education and training); coaching.

The other earlier marks invoked by the opponent and listed above cover the same or a narrower scope of goods and services than the earlier mark which has been compared. Therefore, the outcome cannot be different with respect to the contested services found to be dissimilar and for which the opposition has already been rejected. Indeed, according to Article 8(1)(b) CTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Therefore, no likelihood of confusion exists with respect to those contested services on the basis of Article 8(1)(b) CTMR.

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

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

The opponent has also based its opposition on a sign used in the course of trade, namely the German Company name ‘flow consulting gmbh’, invoking Article 8(4) CTMR.

The Opposition Division will, therefore, continue the comparison between this remaining earlier right and the CTM application, taking into account the contested services found to be dissimilar to those of the earlier marks previously analysed.

Article 8(4) CTMR - INSUFFICIENT EVIDENCE OF THE EARLIER GERMAN COMPANY NAME ‘FLOW CONSULTING GMBH’

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

According to Rule 19(3) CTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) CTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case, the opponent claims the earlier German company name ‘flow consulting gmbh’ under article 8(4) CTMR.

On 15/04/2015 that is, within the deadline set for it to submit further facts, evidence and arguments, and together with its statement of grounds, the opponent refers to the section 5 of the German Trade Mark Act according to which:

(1) Company symbols and titles or works are protected as trade designations.

 

(2) Company symbols are signs used in the course of trade as the name, company name or special designation of a business establishment or of an undertaking. When business insignia and other signs which are intended to distinguish the business establishment from other business establishments are regarded as a symbol of the business establishment among the trade circles concerned, they shall be of equal rank with the special designation of a business establishment.

(3) Titles of works are the names or special designations of printed publications, cinematographic works, acoustical works, plays or other comparable works.

The opponent further refers to section 15 of German Trade Mark Act: according to which:

(1) The acquisition of protection of a trade designation shall confer on the proprietor exclusive rights therein.

(2) Third parties shall be prevented from using, without authority, the trade designation or a similar sign in the course of trade in a manner which may lead to its being confused with the protected designation.

(3) If the trade designation is a trade designation which has a reputation in the Federal Republic of Germany, third parties shall also be prevented from using the trade designation or a similar sign in the course of trade where there exists no likelihood of confusion within the meaning of Subsection 2, to the extent that the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade designation.

(4) The proprietor of a trade designation may claim an injunction against any person who uses a trade designation or a similar sign in contravention of Subsections 2 or 3.

(5) Any person who commits the infringing act wilfully or negligently shall be liable to compensate the proprietor of the trade designation for damage resulting therefrom.

(6) Section 14, Subsection 7, shall apply mutatis mutandis.

However the earlier sign is a German right governed by the German Law. So the opponent is required to prove the content of the applicable law in the original language, namely in German. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation. However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked.(Underlining added). See Rule 19(2)(d) CTMIR, which requires evidence to be submitted and Rule 19(3) CTMIR, which requires translations be submitted within the time limit specified for submitting the original document.

In the present case, the evidence filed by the opponent is a translation into English, the language of the proceedings, of the German Trade Mark Act relevant sections.

Considering all the above, the Opposition Division finds that the opposition is not well founded on the grounds of Article 8(4) CTMR as regards the remaining services covered by the contested sign. Therefore, the opposition must be rejected as regards these services.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Steve HAUSER

Sonia MEHANNEK

Vanessa PAGE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.