OPPOSITION No B 2 438 383

Rapid, akciová společnost, Podolské nábřeží 6/34, 147 00 Podolí, Praha 4, Czech Republic (opponent), represented by Propatent - Patent. Známk., Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)

a g a i n s t

Rapidmail GmbH, Augustinerplatz 2, 79098 Freiburg im Breisgau, Germany (applicant), represented by Liesegang & Partner Mbb Rechtsanwälte, Kettenhofweg 1, 60325 Frankfurt am Main, Germany (professional representative).

On 25/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 438 383 is partly upheld, namely for the following contested services:

Class 35: Advertising, marketing and promotional services, namely, sending emails and mails with advertisement for goods and/or services of others; Administrative services in the field of sending emails and mails with advertisement for goods and/or services of others; Information services, in the field of sending emails and mails with advertisement for goods and/or services of others; Preparation of mailing lists for direct mail advertising services [other than selling].

2. Community trade mark application No 13 264 403 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of Community trade mark application No 13 264 403, namely against some of the services in Class 35. The opposition is based on Czech trade mark registration No 173 066. The opponent invoked Article 8(1)(b) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Czech trade mark registration No 173 066 for the figurative mark .

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 29/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 29/09/2009 to 28/09/2014, inclusive. Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 35: Advertising activity, market research, organizational consultations, economical consultants activity.

According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/01/2015, in accordance with Rule 22(2) CTMIR, the Office gave the opponent until 10/05/2015 to submit evidence of use of the earlier trade mark. On 29/04/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Twenty-two invoices dated between December 2010 and November 2014 issued by the opponent’s company to different clients throughout the Czech Republic. The invoices are in Czech. Their relevant parts are translated into English and they itemise, among other services, advertising and media services. The opponent’s sign appears at the top of each invoice. However, five out of these 22 invoices are dated between October 2014 and November 2014, which is outside the relevant period.

• Two invoices dated February 2007 and June 2006, issued by the opponent company for advertising services, which are outside the relevant period.

• An advertisement in the magazine Podnikatel dated March 2011 showing the opponent’s company and sign in relation to services offered in the field of advertising, market research, organisational consultancy and economic consultants, according to the opponent. A copy of the invoice paid by the opponent’s company for this advertisement is also attached.

• Several undated pictures of promotional items (e.g. umbrellas, clocks and pens) showing the opponent’s sign and used by the opponent’s company in its presentations.

• A picture of a calendar dated 2013 and showing the opponent’s sign.

• A copy of three catalogues issued by the opponent to promote the advertising services offered by the opponent’s company under the earlier mark. The catalogues, however, are dated 2000, 2001 and 2002, which is outside the relevant period.

• Samples of packaging materials such as bags, boxes and folders showing the earlier mark.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) CTMIR). Taking into account the nature of the documents that have not been completely translated and are considered relevant to the present proceedings, namely invoices, the relevant parts of which were translated and the rest of which is self-explanatory, the Opposition Division considers that there is no need to request further translation.

In addition, as regards the applicant’s argument that the invoices are issued not for advertising services but for other services, the Opposition Division notes that, from the opponent’s translations of the services itemised in the invoices as well as from the translations of the same parts of those invoices submitted spontaneously by the applicant, it is clear that they have been issued for, inter alia, advertising services. Therefore, this argument of the applicant cannot be taken into account and must be set aside.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. Therefore, the evidence provided must be assessed in its entirety.

The evidence shows that the place of use is the Czech Republic. This can be inferred from the language of the invoices dated between December 2010 and November 2014, which are in Czech, the currency mentioned therein and the addresses of the clients throughout the Czech Republic, and also from the language of the advertisement for the opponent’s services under the earlier mark in the magazine Podnikatel dated March 2011 and from the corresponding invoice paid by the opponent company for it. Therefore, the evidence relates to the relevant territory.

Most of the relevant evidence is dated within the relevant period.

Regarding the nature of use, the earlier mark is a figurative mark and the evidence shows that it has been used as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. In particular, the invoices dated between December 2010 and November 2014, the advertisement for the opponent’s services under the earlier mark in the magazine Podnikatel dated March 2011 and the corresponding invoice paid by the opponent company provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. Therefore, the extent of use has also been satisfactorily proven.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence proves use for advertising activity. As the opponent is not required to prove all the conceivable variations of the category of services for which the earlier mark is registered and as the services for which use has been proved do not constitute a coherent subcategory within the broad categories in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for the following services.

Class 35: Advertising activity

The other services, namely market research, organizational consultations, economical consultants activity, are mentioned in only one piece of evidence submitted by the opponent (namely in the advertisement for the opponent’s services under the earlier mark in the magazine Podnikatel dated March 2011), which is clearly not sufficient to prove genuine use for them. In the absence of any other evidence supporting the use of the earlier mark for these services, it must be considered that the sign has not been used in relation to them.

Therefore, the Opposition Division will only consider the abovementioned advertising activity in its further examination of the opposition.

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.

1. The services

The services on which the opposition is based and for which use was proven are the following:

Class 35: Advertising activity

After a limitation made by the applicant, the contested services are the following:

Class 35: Advertising, marketing and promotional services, namely, sending emails and mails with advertisement for goods and/or services of others; Business assistance, management and administrative services in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; Commercial trading and consumer information services, namely, sending emails and mails with commercial trading and consumer information services; Business analysis, research and information services, in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; Preparation of mailing lists for direct mail advertising services [other than selling].

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 advertising, marketing and promotional services, namely, sending emails and mails with advertisement for goods and/or services of others; preparation of mailing lists for direct mail advertising services [other than selling] are included in the broad category of the opponent’s advertising activity. Therefore, they are identical.

The contested administrative services in the field of sending emails and mails with advertisement for goods and/or services of others; information services, in the field of sending emails and mails with advertisement for goods and/or services of others are similar to the opponent’s advertising activity. These services have the same nature, are frequently provided in a complementary way, target the same consumers and are likely to come from the same undertaking.

The contested business assistance, management in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; business analysis, research, in the field of sending emails and mails with advertisement for goods and/or services of others 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 to provide businesses with the necessary support to acquire, develop and expand market share. These services include any ‘consultancy’, ‘business research’, ‘cost price analysis’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to increase market share; how to deal with competitors; how to develop new products; how to communicate with the public; how to market good and services; how to research consumer trends; how to launch new products; how to create a corporate identity; etc. When comparing these services with the opponent’s advertising activity, it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. The purpose of advertising services is ‘to reinforce the [business’s] position in the market’ and the purpose of business management services is to help a business ‘to develop, expand and acquire market share’. There is no clear-cut difference between ‘reinforcing a business’s position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services and, therefore, the relevant public may believe that these two services have the same professional origin. Consequently, considering the above, these services are similar to a low degree.

The contested administrative services in the field of sending emails and mails with commercial trading and consumer information for others; commercial trading and consumer information services, namely, sending emails and mails with commercial trading and consumer information services; business analysis, research and information services, in the field of sending emails and mails with commercial trading and consumer information for others have nothing in common with the opponent’s advertising activity. They differ in nature, purpose, producers, consumers and distribution channels. Furthermore, they are not complementary in nature, nor are they in competition with one another. In fact, the contested services have more of an executive nature or consist of office services and will not be associated with the opponent’s advertising activity. Therefore, they 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 services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high (namely for business assistance, management in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; business analysis, research, in the field of sending emails and mails with advertisement for goods and/or services of others) depending on the cost and degree of specialisation of the services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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).

Both marks are figurative marks.

The earlier mark consists of a large black, almost triangular device pointing to the left, concave on the right side, enclosing a smaller white, almost triangular device pointing to the right, concave on the left side. The word ‘rapid’ is written in black standard lower case letters and appears to the right of the device element.

The contested sign consists of a white, almost triangular device with to its right the word ‘rapidmail’ in white standard lower case letters. These elements are placed on a red rectangle serving as the background of the sign.

Although, in principle, signs cannot be artificially dissected, it is reasonable to assume that part of the relevant public will grasp in the verbal element of the contested sign, ‘rapidmail’, the English word ‘rapid’ (which is also close to the Czech adverb ‘rapidně’ meaning, inter alia, ‘rapidly’) as meaning ‘fast, quick’. In addition, the element ‘mail’ in the contested sign will be associated with ‘electronic mail’ on account of widespread use of the English word ‘e-mail’ in the relevant territory. The part of the relevant public that will grasp these meanings will most probably perceive the contested sign as a reference to ‘a quick e-mail delivery’. Bearing in mind that the relevant services are, inter alia, advertising, marketing, promotional, administrative and information services in the field of sending emails with advertisement, the element ‘rapidmail’ is weak for some of these services, namely for the applicant’s advertising, marketing and promotional services, namely, sending emails and mails with advertisement for goods and/or services of others; business assistance, management in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; administrative services in the field of sending emails and mails with advertisement for goods and/or services of others; business analysis, research and information services, in the field of sending emails and mails with advertisement for goods and/or services of others; preparation of mailing lists for direct mail advertising services [other than selling] in Class 35, as it informs the public about a characteristic of the services in question. Consequently, this part of the relevant public will not pay as much attention to the element ‘rapidmail’ as to the other, more distinctive, elements of the contested sign (if any). As a result, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

However, for the remaining part of the public, which will not attribute any meaning to the elements ‘rapid’ and ‘mail’ in the contested sign, its word ‘rapidmail’ will be perceived as meaningless. Therefore, for this part of the relevant public its distinctiveness must be seen as normal and none of the elements of the contested sign is more distinctive than the others.

The same meaning of ‘fast and quick’ will be attributed by part of the public to the verbal element ‘rapid’ of the earlier mark. Since this element alone is not descriptive or lacks distinctiveness for any of the relevant services, as it does not have any direct meaning in relation to the characteristics of the services, its distinctiveness must be seen as normal.

The remaining part of the public, which will not attribute any meaning to the word ‘rapid’ of the earlier mark, will perceive it as meaningless and its distinctiveness must be seen as normal in this case as well.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The figurative element in the earlier sign, being larger, is slightly more dominant than the verbal element, ‘rapid’.

Visually, the signs coincide in ‘rapid’. However, they differ in ‘mail’ in the verbal element of the contested sign. The marks also differ in their figurative elements. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Account should also be taken of the fact that the first part of the verbal element of the contested sign is identical to the verbal element of the earlier mark. Consumers generally tend to focus on the first element of a sign when 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 beginnings of the signs are an important factor to take into account when assessing the visual similarity between them. In the same regard, it is also important to consider the fact that the word ‘rapid’ in the earlier mark is a distinctive element that plays an independent role therein and is fully incorporated in the contested sign. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RAPID’, present identically in both signs. It must be also remembered that ‘rapid’ is a distinctive element of the earlier mark that plays an independent role therein and is fully incorporated in the contested sign. The pronunciation differs in the sound of the letters ‛MAIL’ of the contested mark, which have no counterparts in the earlier sign. The figurative elements of the signs are not pronounced. Therefore, the signs are similar to an average degree.

Conceptually, as already stated, although the signs as a whole do not have any meaning for the public in the relevant territory, it is reasonable to assume that part of the relevant public will grasp in the verbal element of the contested sign, ‘rapidmail’, the English word ‘rapid’, which is very close to the equivalent adverb ‘rapidně’ in the official language in the relevant territory, as meaning ‘fast, quick’. The same reasoning applies to the verbal element, ‘rapid’, of the earlier mark.

The element ‘mail’ in the contested sign, which is very close to the equivalent word ‘email’ in the official language in the relevant territory, will be perceived by at least a significant part of the relevant public as indicating a message sent electronically.

Consequently, irrespective of the perception of the element ‘mail’ in the contested sign, for a part of the public, the signs are conceptually similar to an average degree to the extent that they will be associated with the same meaning in relation to the element they have in common, ‘rapid’, which is also a distinctive element in the earlier mark and is incorporated in the contested sign.

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.

5. Global assessment, other arguments and conclusion

The services are partly identical, partly similar to various degrees and partly dissimilar.

The signs are visually and aurally similar to the extent that the verbal element of the earlier mark, ‘rapid’, is fully included within the word ‘rapidmail’ of the contested mark. Furthermore, irrespective of the fact that, for the part of the public that attributes a meaning to the verbal elements of the marks, they are conceptually similar in relation to ‘rapid’, for the remaining part of the public, which does not attach any meaning to the verbal elements of the signs, both verbal elements, ‘rapid’ and ‘rapidmail’, are meaningless and distinctive.

In addition, the fact that a part of the Czech public will perceive the element ‘rapidmail’ in the contested sign as alluding to ‘a quick e-mail delivery’, in relation to some of the services, does not prevent a likelihood of confusion, since the words ‘rapid’ and ‘mail’ do not exist as such in the official language in the relevant territory and are also conjoined to form one invented word that is capable of indicating the commercial origin of the services in question.

Average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. In this respect, it must be borne in mind that even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In view of all the above, it must be concluded that, at least for the identical or similar services, the differences between the signs residing in some additional letters or in their essentially decorative stylisations are not enough to outweigh the similar overall impressions of the marks and to deflect attention from their similar verbal components, which have a stronger impact on the consumer’s perception. This is because the overall similarity of the signs may result in confusion in relation to said services, as the similarity between the signs, which is average, will be outweighed by the identity or similarity between the services.

In this case, however, the average degree of similarity between the signs is not sufficient to result in confusion for those services that are similar only to a low degree, as they target the specialised consumer, who will pay a high degree of attention when encountering the marks in question. Therefore, confusion is unlikely to occur with regard to these services, namely business assistance, management in the field of sending emails and mails with advertisement for goods and/or services of others and emails and mails with commercial trading and consumer information for others; business analysis, research, in the field of sending emails and mails with advertisement for goods and/or services of others.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for the services that are identical or similar to those of the earlier trade mark and therefore the opposition is partially well founded on the basis of the opponent’s Czech trade mark registration.

It follows from the above that the contested trade mark must be rejected with regard to these services. The opposition is not successful insofar as the remaining services, which are similar to a low degree or dissimilar, are concerned.

According to Article 8(1)(b) CTMR, the similarity of the services is a condition for a finding of likelihood of confusion. Since some of the services are clearly dissimilar, one of the necessary conditions contained in Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected insofar as it is directed against 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

Konstantinos MITROU

Karin KUHL

Michaela SIMANDLOVA

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.