OPPOSITION No B 2 408 410

Mundio Investment Holding Limited, 54, Marsh Wall London, United Kingdom (opponent), represented by Mundio Investment Holding Limited, Stephanie Toubol Lazarus, 54, Marsh Wall London, E14 9TP, United Kingdom (employee representative)

a g a i n s t

Ida&Vera Oy, Pihlajatie, 25 A, 6 00270 Helsinki, Finland (applicant), represented by Borenius Attorneys LTD, Eteläesplanadi 2, 00130 Helsinki, Finland (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 408 410 notified to the parties on 20/11/2015 is hereby revoked.

2. Opposition No B 2 408 410 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; computer software.

Class 41: Education; entertainment.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

3. European Union trade mark application No 13 152 021 is rejected for all the above goods and services. It may proceed for the remaining services.

4. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 152 021. The opposition is based on European Union trade mark registration No 10 338 705. The opponent invoked Articles 8(1)(a), 8(1)(b), and 8(5) EUTMR.

DECISION ON THE REVOCATION – ARTICLE 80 EUTMR

According to Article 80(1) EUTMR, where the Office has made an entry in the Register or taken a decision that contains an obvious error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

In the case at hand, the decision contains an obvious procedural error attributable to the Office, namely in the dictum it was erroneously stated that the opposition was partially upheld for contested services in Class 42, namely, ‘industrial analysis and research services’, instead of ‘scientific and technological services and research and design relating thereto; design and development of computer hardware and software’. In addition, on page 2 of the revoked decision, the earlier European Union trade mark number is mentioned as No 13 152 021 instead of No 10 338 705.

The parties were informed of this error on 23/03/2016. In accordance with Article 80 EUTMR, the Office gave a deadline to the parties to submit any observations.

In reply the applicant acknowledged the Office’s confirmation of the procedural error of the decision taken by the Opposition Division on 20/11/2015. In addition, in a communication dated 01/12/2015, the applicant requested ‘the possible new date of notification of the decision in order to determine the correct date to file the notice of appeal’.

The opponent did not furnish any comments in reply.

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.

Therefore, the decision notified on 20/11/2015 is hereby revoked and replaced with the present decision.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 35: Advertising; business management; business administration; office functions.

Class 38: Telecommunications.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; computer software.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; conducting fitness classes; physical fitness consultation; physical fitness instruction; physical fitness training services; providing fitness and exercise facilities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The earlier European Union trade mark No 10 338 705 is registered for the entire class headings of Classes 9, 35 and 38 of the Nice Classification. It was filed on 13/11/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

Consequently, in order to take account of the entire alphabetical lists in Classes 9, 35 and 38 of the earlier European Union trade mark registration, the Opposition Division will compare the contested goods with both (i) the general indications specified and (ii) any items in the alphabetical list that do not fall within the natural and usual meaning of these general indications of the earlier mark.

In Classes 9, 35 and 38 the Opposition Division has identified the following items in the alphabetical lists covered by the earlier mark that do not fall within the natural and usual meaning of these general indications:

Class 9: Animated cartoons; attracting and killing insects (Electric devices for -); cigar lighters for automobiles; cleaning apparatus for phonograph records; containers for contact lenses; door closers, electric; door openers, electric; electric arc cutting apparatus; electric arc welding apparatus; electric welding apparatus; electronic publications, downloadable; electroplating apparatus; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; flat irons, electric; galvanizing apparatus; hair-curlers, electrically heated; lift operating apparatus; magnets; magnets (Decorative -); make-up removing appliances, electric; mouse pads; sealing plastics (Electrical apparatus for -) [packaging]; soldering apparatus, electric; soldering irons, electric; spectacle cases; spectacle frames; wrist rests for use with computers.

Class 35: Auctioneering; rental of vending machines.

Class 38: No items found.

Therefore, as regards these classes, both the general indications specified and the items listed above will be compared.

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 goods in Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers are identically contained in both lists of goods and services.

The contested computer software is composed of programs, routines, and symbolic languages that control the functioning of the hardware (principally the computer) and direct its operation. Therefore, they have some relevant points in common with the opponent’s data processing equipment and computers. They are all related to the IT field and can be considered complementary to each other in the sense that, for example, a product such as a computer needs programs to operate. Furthermore, they also have the same end users, distribution channels, sales outlets and commercial origin. These goods are therefore similar.

Contested services in Class 41

The contested education; entertainment services are similar to low degree the opponent’s animated cartoons in class 9. They can have a similar purpose. Furthermore, they can coincide in relevant public and commercial origin.

The contested providing of training; sporting and cultural activities; conducting fitness classes; physical fitness consultation; physical fitness instruction; physical fitness training services; providing fitness and exercise facilities are dissimilar to the earlier goods and services in classes 9, 35 and 38.

The earlier goods in Class 9 are items related to technology. The earlier services in Class 35 are related to business, advertising and office functions. The earlier services in Class 38 are telecommunications. The contested services, however, concern sport recreational services.

The fact that access to a network, access to a database or the transmission of data may be needed in the course of the services offered by the opponent is not sufficient to find a similarity between the services under comparisonIt is clear that these services are different in nature, will be provided by different companies, aimed at different end consumers and are not complementary to one another.

Contested services in Class 42

The contested design and development of computer hardware and software is similar to the opponent’s data processing equipment and computers in Class 9. The services in Class 42 of the contested sign cover different computer services and design and development of computer hardware and software. Programming and computer services are closely linked to computers. This is because in the field of computer science producers of computers and software will also commonly render computer and software-related services (as a means of keeping the system updated, for example). Consequently and in spite of the fact that the nature of the goods and services is not the same, both the end-users and use of the goods and services coincide. Furthermore, they are products and services that are complementary. For these reasons it is considered that these goods and services are similar.

The contested scientific and technological services and research and design relating thereto are similar to the opponent’s telecommunication services in Class 38. These services can coincide in their purpose, are complementary, have the same distribution channels and are likely to come from the same kinds of companies.

Regarding the remaining industrial analysis and research services the Office finds that they are dissimilar to the opponent’s goods and services in classes 9, 35 and 28. The applicant’s services are provided by engineers in the fields of science, technology and industry. They are of a specialized nature and are likely to be provided to businesses developing technologies. The goods and services under comparison do not coincide in purpose. Moreover, they do not share the same end-users or the same distribution channels. It is unlikely that the services and the goods at issue are provided or manufactured by the same undertakings. There is no similarity between these services. Even if the applicant’s services in Class 42 may require the use of scientific apparatus covered by the opponent’s specification in Class 9, the link is so remote that it does not give rise to any similarity. In addition, the goods and services are different in nature. Consequently, the goods and services at issue are dissimilar.

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 goods and services found to be identical or similar are directed at the public at large and also are directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the degree of specialization of the relevant goods and services.

3. The signs

Cuckoo Mobile	CUCKOO WORKOUT
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

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).

Both signs are word marks. The fact that the earlier mark is partly depicted in upper and partly in lower case letters is irrelevant for the purpose of comparison, since in the case of word marks it is the word as such that is protected and not its written form. The marks under comparison have no elements which could be considered clearly more dominant (visually eye catching) than other elements.

Regarding the distinctive components of the marks, the element ‘Mobile’ of the earlier mark will be associated with ‘‘portable telephone’. Bearing in mind that the relevant goods and services are ‘technological and telecommunication‑related’ it is considered that this element is weak for these goods and services. On the other hand, the word ‘workout’ of the contested sign refers to ‘a period of physical exercise or training’ (Collings English Dictionary online) it is therefore has been found to be a laudatory message for a part of the contested goods and services such as education and entertainment services. The common word ‘Cuckoo’ refers to ‘a bird with a call that sounds like its name’ or to the adverb ‘crazy’ (Collins English Dictionary online). The former concepts have no meaning in relation to the relevant goods and services, and therefore, the word ‘Cuckoo’ is considered as a distinctive component.

Visually, the signs are similar to the extent that they coincide in the first word ‘Cuckoo’. However, they differ in their second word i.e. ‘Mobile’ of the earlier mark versus ‘WORKOUT’ of the contested sign. The former different words of the marks have been found weak (laudatory) for at least part of the relevant goods and services. Consequently, the public understands the message of the words ‘Mobile’ and ‘workout’ and will not pay as much attention to them as the distinctive word ‘Cuckoo’.

Since the first word, ‘Cuckoo’, in both marks, is the most distinctive element of the marks. Therefore, since the signs only differ in laudatory words, it is reasonable to conclude that the signs are will be perceived as similar by the relevant consumer.

Aurally, the same considerations apply: the pronunciation of the signs is the same for ‘/Cuckoo/’ and differs in ‘/Mobile/’ in the earlier mark versus ‘/WORKOUT/’ of the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, the signs as a whole do not have a meaning for the public in the relevant territory. However, the common word ‘cuckoo’, the word ‘Mobile’ of the earlier mark and the word ‘Workout’ of the contested sign will be associated with the relevant public with the meanings above mentioned.

Therefore, since the signs will be associated with the similar concept of the ‘bird with a call that sounds like its name’ or with the adverb ‘crazy’, which have no meaning in relation to the goods and services, as stated above, the signs are 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The conflicting goods and services have been found to be partly identical, partly similar (to different degrees) and partly dissimilar.

The signs are aurally, visually and conceptually similar in that they both contain the word ‘Cuckoo’ as the first and the most distinctive element of the marks. ‘Cuckoo’ has no relationship to the goods and services and has a quirky and playful quality which gives it trade mark significance. In the view of the Opposition Division, consumers are likely to see it as an indication of commercial origin.

Furthermore, as explained above, the word ‘mobile’ in the earlier mark it has been found to be weak for the technological and telecommunication‑related goods and services. Likewise, the word ‘workout’ in the contested sign, it has been found to be a laudatory message for a part of the contested goods and services. Consequently, the impact of these weak and laudatory components is limited when assessing the likelihood of confusion between the marks at issue.

In its judgment of 11/11/1997, C-251/95, ‘Sabèl’, the Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case, this consists of an overall assessment of several interdependent factors and their relevant including: (i) the similarity of the goods and services, (ii) the similarity of the signs, (ii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public. Further, a likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. If a significant part of the relevant public of the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.

Since the word ‘Cuckoo’ will have an independent and distinctive role and given the identity and similarity between the goods and services at hand, there is a risk of confusion, even considering that a higher level of attention may be displayed for some of the goods and services.

In its observations, the applicant argues the existence of several European Union (formerly ‘community’) trade mark registrations that include the element ‘Cuckoo’ covering the same goods and services as the opponent’s trade mark. The applicant essentially argues that since the opponent’s mark coexists with these other marks, it can also coexist with the contested mark (which actually covers different goods and services to those of the opponent’s earlier right). In support of its argument the applicant refers to ten European Union trade mark registrations.

Four out of ten of the EUTM registrations cited contain the element ‘CUCKOO’ and are registered for the same goods and services as the contested mark. The EUTMs are ‘THE CUCKOO’S CALLING’; ‘CUCKOO CORNER’; CUCKOO FRUITS’ and ‘CUCKOO CANVAS’.

Article 8 EUTMR enables the proprietors to base oppositions on their earlier rights to prevent the registration of EUTMs in a range of situations, among others, on similarity (Article 8(1)(b) EUTMR, where there must be a likelihood of confusion). Such relative grounds objections are not raised ex officio by the Office. The onus is therefore on the earlier right owner to be vigilant concerning the filing of EUTMAs by others which could clash with such earlier rights, and to oppose conflicting marks when necessary.

The fact that the opponent did not oppose to the aforementioned EUTM registrations containing the element ‘CUCKOO’ does not involve the Opposition Division. It is a matter for the opponent only. Under these circumstances, the applicant’s claims must be set aside.

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 goods and 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)(b) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs are obviously not identical.

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.

According to Article 76(1) EUTMR, 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) EUTMIR, 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 21/11/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 21/03/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rhys MORGAN

Paula ROMAN MAESTRE

Reiner SARAPOGLU

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.