OPPOSITION No B 2 460 171

Intuit Inc., 2535 Garcia Avenue, 94043 Mountain View, California, United States of America (opponent), represented by William James Kopacz, 129 Boulevard St-Germain, 75006 Paris, France (professional representative)

a g a i n s t

Holding Eil, 16 rue Popincourt, 75011 Paris, France (applicant), represented by Alexandre Diehl, 68 rue du Faubourg Saint Honoré, 75008 Paris, France (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 460 171 is upheld for all the contested goods and services, namely

Class 9: Recorded content for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax; audiovisual equipment for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

Class 35: Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services; all of the aforementioned for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

Class 42: Design services, namely visual communications design services; Data duplication and conversion services, data coding services; IT consultancy, advisory and information services for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

2. European Union trade mark application No 13 333 513 is rejected for all the contested goods and services. It may proceed for the remaining non-contested goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 333 513 for the word mark ‘école intuit.lab’, namely against all the goods and services in Classes 9, 35 and 42. The opposition is based on, inter alia, European Union trade mark registrations No 6 979 835 and No 6 979 934, both for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

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 European Union trade mark registrations No 6 979 835 and No 6 979 934, both for the figurative mark .

a) The goods and services

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

 European Union trade mark registration No 6 979 835

Class 9: Data processing equipment; software; computer software for use in the field of personal and business finance and accounting, transaction processing, tax preparation and planning, tax filing, business process management, and financial planning; computer software for database and data management.

Class 42: Design and development of computer hardware and software.

 European Union trade mark registration No 6 979 934

Class 35: Advertising; business management; providing business management consulting services; association and membership services, namely promoting the interests of, and providing business referral, marketing and business management services to member accounting and business management professionals.

The contested goods and services are, after a limitation by the applicant on 14/08/2018, the following:

Class 9: Recorded content for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax; audiovisual equipment for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

Class 35: Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services; all of the aforementioned for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

Class 42: Design services, namely visual communications design services; Data duplication and conversion services, data coding services; IT consultancy, advisory and information services for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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

The contested recorded content for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are included in the broad category of the opponent’s software (No 6 979 835). Therefore, they are identical.

The contested audiovisual equipment for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are included in the broad category of the opponent’s data processing equipment (No 6 979 835). Therefore, they are identical.

Contested services in Class 35

The contested business management; business analysis, research and information services; all of the aforementioned for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are included in, or overlap with, the broad category of the opponent’s business management (No 6 979 934). Therefore, they are identical.

The contested advertising, marketing and promotional services; all of the aforementioned for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are included in, or overlap with, the broad category of the opponent’s advertising (No 6 979 934). Therefore, they are identical.

The contested business assistance and administrative services all of the aforementioned for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are similar to the opponent’s business management (No 6 979 934). These services have the same purpose, they usually coincide in provider and relevant public.

Contested services in Class 42

The contested design services, namely visual communications design services are included in the broad category of, or overlap with, the opponent’s design and development of computer software (No 6 979 835). Therefore, they are identical.

The contested data duplication and conversion services, data coding services; IT consultancy, advisory and information services for digital education in the fields of design education and visual communications education, and not in the fields of finance, accounting, bookkeeping, or tax are similar to the opponent’s design and development of computer hardware and software (No 6 979 835). These services usually coincide in provider, distribution channels and relevant public.

b) 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 applicant argues that the earlier marks and the contested sign target a different relevant public, as the contested sign, contrary to the earlier marks, specifically targets children and students.

As stated by the Court, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for that were found to be identical or similar (judgment of 01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23; appeal dismissed 10/07/2009, C-416/08 P, Quartz, EU:C:2009:450).

Consequently, the relevant public is based on the goods and services as registered, and not based on the signs as used in commerce.

Therefore, in the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased and/or provided.

c) The signs

	école intuit.lab
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The verbal element ‘école’ in the contested sign will be perceived by the French-speaking public as ‘school’, ‘a place where a particular skill or subject is taught’. Taking into account that all contested goods and services are either meant for education, or might target schools and/or can be provided by schools, this element is considered to be weak for this part of the relevant public.

The Opposition Division finds it, therefore, appropriate to focus the comparison of the signs on the French-speaking part of the public, as this part of the public will be more prone to confusion due to the weak character of the verbal element ‘école’.

The contested sign is a word mark and in the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case letters, or in a combination thereof.

Part of the relevant public will perceive the verbal element ‘intuit’ in both marks with the meaning: ‘to know or discover by intuition’, due to the fact that it alludes to the French words ‘intuition’ or ‘intuitive’. Another part of the public will perceive this word as meaningless. In any case, this word has no meaning in relation to the relevant goods and services and is, therefore, distinctive.

The verbal element ‘lab’ in the contested sign will be perceived, by a significant part of the relevant public, as short for ‘laboratory’ which is the equivalent for the French word ‘laboratoire’. Taking into account that some of the relevant goods and services might be used/tested/provided in laboratories, this element has a low degree of distinctiveness for this part of the relevant public in relation to some of the goods and services. Another part of the relevant public will perceive the element ‘lab’ as meaningless in relation to the relevant goods and services and, therefore, for this part of the relevant public, it is distinctive.

Visually, the signs coincide in the word ‘intuit’, constituting the entire earlier marks and, for part of the relevant public, the most distinctive element of the contested sign. However, they differ in the verbal elements, ‘école’, in the contested sign, which has a low degree of distinctive character, and, ‘lab’, which has a low degree of distinctive character for some of the goods and services and is positioned at the end of the contested sign where it will, in any case, get less attention, because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Furthermore, the marks differ in the two dots above the letters ‘T’ in the earlier marks (one above each letter), in the dot in the contested sign that separates the verbal elements ‘intuit’ and ‘lab’, and in the slightly stylised typefaces used in the earlier marks. However, the stylisation of these typefaces is fairly standard and will not distract the consumer’s attention from the elements embellished in this way.

Taking into account all of the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘intuit’, present identically in both signs. The pronunciation differs in the sound of the words ‘école’ and ‘lab’ of the contested sign, which will nevertheless get less attention, as they have a low degree of distinctiveness and/or are in a secondary position at the end of the sign. Furthermore, the pronunciation will differ in the dot (if pronounced at all) in the contested sign.

Taking into account all of the above, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs.

As the relevant public will associate the signs with a similar meaning on account of the coinciding word ‘intuit’, while the two differing verbal elements in the contested sign have a low degree of distinctiveness and/or are placed at the end of the sign, the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier marks have a normal degree of inherent distinctiveness. The relevant public is the public at large and a professional public; the degree of attention varies from average to high.

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

The goods and services are partly identical and partly similar.

The signs are visually, aurally and conceptually similar to an average degree.

Taking into account all of the relevant factors, and especially the similarities between the signs and the identity and similarity between the goods and services, it is considered that the relevant public will be led to believe that the identical and similar goods and services come from the same undertaking or economically-linked undertakings, even when a higher degree of attention is paid.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 6 979 835 and No 6 979 934. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is 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 use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registrations No 6 979 835 and No 6 979 934 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Michal KRUK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.