OPPOSITION No B 2 522 384

Consiliator SL, Infanta Mercedes, 109-111 1º Of. 28020 Madrid, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)

a g a i n s t

Aventus Gesellschaft für Beratung- Management und Kapitalbeteiligung, Sendlingerstraße 7, 80331, Munich, Germany (applicant), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative).

On 04/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 522 384 is partially upheld, namely for the following contested services:

Class 35: clerical services; market reporting services; business efficiency expert services; writing of business project reports; preparation of economic reports; administrative data processing; office functions services; arranging of presentations for business purposes; business strategy development services; business strategy services; information about sales methods; commercial management; administration of the business affairs of franchises; administration of the business affairs of retail stores; strategic business planning; administration (business -) relating to statistical methods.

2. European Union trade mark application No 13 236 013 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 all the services of European Union trade mark application No 13 236 013. The opposition is based on Spanish trade mark registrations No 2 305 839 and No 2 305 840. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION OF EARLIER SPANISH TRADE MARK No 2 305 840

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) EUTMIR, 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.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, 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) EUTMIR, 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.

On 13/05/2015, the opponent filed a document in the language of the proceedings containing data concerning trade mark No 2 305 840 on which the opposition is based. However, such document does not meet the requirements set in Rule 98(1) EUTMIR.

In this context, the Opposition Division notes that the document submitted by the opponent does not contain all the relevant data from the printout from the official database of the Spanish Patents and Trade Mark Office (OEPM), namely the complete list of services for which the abovementioned trade mark is registered. Hence, the document does not reproduce the structure and contents of the evidence to be translated.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the opponent’s trade mark No 2 305 840 cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The examination will continue in relation to Spanish trade mark registration No 2 305 839.

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.

As a preliminary remark, it must be noted that the opponent provided the translation of Spanish trade mark registration No 2 305 839, including the service administration of business affairs.... However, an examination of the files has shown that this service is not included in the original list of services for which the abovementioned trade mark is registered. Therefore, the Office will proceed with the comparison of services disregarding the abovementioned additional service.

1. The services

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

Class 35: services of advisers for the organization and management of business, commercial, accounting, advising, business management, elaboration of statements of accounts, bookkeeping, assistance to the management of business.

The contested services are the following:

Class 35: clerical services; market reporting services; business efficiency expert services; writing of business project reports; preparation of economic reports; administrative data processing; office functions services; arranging of presentations for business purposes; business strategy development services; business strategy services; information about sales methods; commercial management; administration of the business affairs of franchises; administration of the business affairs of retail stores; strategic business planning; administration (business -) relating to statistical methods.

Class 36: fundraising and sponsorship; financial and monetary services, and banking; investment services.

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 business strategy development services, business strategy services, strategic business planning, commercial management are included in the broad category of the opponent’s business management; therefore, they are identical.

The contested business efficiency expert services are similar to a high degree to business management because they have the same purpose and nature and they can be carried out by the same professionals. Furthermore, they target the same relevant public.

The contested market reporting services, writing of business project reports, preparation of economic reports, arranging of presentation for business purpose, information about sales methods are similar to the opponent’s assistance to the management of business because they have the same providers, purpose and relevant public. Moreover, they can be in competition.

The contested administration of the business affairs of franchises, administration of the business affairs of retail stores, administration (business -) relating to statistical method are similar to the opponent’s business management because they can have the same purpose, they can be carried out by the same providers and they target the same relevant public.

The contested clerical services, office functions service and administrative data processing are similar to a low degree to the opponent’s business management.

Contested services in Class 36

The contested fundraisings and sponsorship refer to services that aim to raise money for a particular cause or give money, products or services to support a person, an organisation or an activity. The contested financial and monetary services, banking and investment services are all services related to the management of money and can be provided by a vast range of companies, such as banks, investment funds and credit card companies.

The opponent’s services are usually rendered by specialist companies 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. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. These services are considered dissimilar to the contested services. They do not have the same nature and they satisfy different needs. The contested services and the opponent’s services do not usually have the same origin; they are usually offered by specialist companies in their corresponding fields. Furthermore, they are generally offered through different 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.

The services at issue are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

3. The signs

consiliator sl	Conciliator
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, namely ‘consiliator’ followed by the sequence of letters ‘sl’. The verbal element ‘consiliator’ does not have any particular meaning in the relevant territory; however, it is highly similar to and might remind customers of the word ‘conciliador’, which means the person in charge of ‘helping the parties in a dispute to reach agreement’ (information extracted from Diccionario de la Real Academia de la Lengua Española on 11/03/2016 at http://dle.rae.es/?id=A8wvkVX). The sequence of letters ‘sl’ refers, in the relevant territory, to a juridical form adopted by a company, namely a limited liability company. Therefore, this verbal element is devoid of distinctive character because it is a common abbreviation used to indicate the juridical form of a company.

The contested sign is a word mark, ‘Conciliator’, which, like the earlier sign, may be perceived as a misspelling of the word ‘conciliador’, which, as mentioned above, in the relevant territory means the person in charge of ‘helping the parties in a dispute to reach an agreement’ (information extracted from Diccionario de la Real Academia de la Lengua Española on 11/03/2016 at http://dle.rae.es/?id=A8wvkVX).

Considering the services at issue, both signs have a normal degree of inherent distinctiveness, since the meaning they evoke has no relevance to the services that they cover.

Visually, the earlier sign includes two verbal elements, namely ‘consiliator sl’. The contested sign is ‘Conciliator’. Therefore, the signs coincide in the sequence of letters ‘con*iliator’. The signs differs in their fourth letters, ‘s’ versus ‘c’, and in the sequence of letters ‘sl’ in the earlier sign, which, however, have to be considered devoid of any distinctive character because they denote the juridical form of the company. Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘con*lia/tor’, present identically in both signs, and in the sound of the letter ‘i’ in the fifth position in both marks. The pronunciation differs in the sound of the letters ‘s’ and ‘c’ in the fourth positions in the signs. The pronunciation also differs in the non-distinctive element ‛sl’ of the earlier sign, which has no counterpart in contested mark. Therefore, the signs are highly similar.

Conceptually, although neither of the signs has a particular meaning in the relevant territory, they both evoke the concept of the Spanish word ‘conciliador’ and might be perceived as referring to the person in charge of ‘helping the parties in a dispute to reach agreement’ (information extracted from Diccionario de la Real Academia de la Lengua Española on 11/03/2016 at http://dle.rae.es/?id=A8wvkVX). The signs differ conceptually in the denomination ‘sl’, which has no counterpart in the contested sign; however, this dissimilarity lies in a non-distinctive element. To that extent, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services on which the opposition is based are partly identical, partly similar to varying degrees and partly dissimilar to the contested services. The signs are aurally, visually and conceptually highly similar. The signs have 10 letters in common, out of a total of 13 in the earlier mark. Considering that the letters ‘sl’ will be seen as an indication of the juridical form of the company, the signs are almost identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to various degrees 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.

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

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

Victoria DAFAUCE MENÉNDEZ

Agueda MAS PASTOR

Dorothée SCHLIEPHAKE

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. 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.