OPPOSITION No B 2 485 004

Repsol, S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Polskie Linie Lotnicze ‘Lot’ SA, 17 Stycznia 39, 00-906 Warszawa, Poland (applicant), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative).

On 22/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 485 004 is partially upheld, namely for the following contested goods:

Class 16: Printed matter; printed matter; educational supplies; books; booklets; educational equipment; textbooks; handbooks [manuals]; educational publications.

2. Community trade mark application No 13 436 514 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 436 514. The opposition is based on Community trade mark registration No 8 125 627. The opponent invoked Article 8(1)(b) CTMR.

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 goods and services

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

Class 9: Imaging systems, image processing and electronic image processing apparatus and instruments and advanced subsurface imaging applications.

Class 41: Digital imaging services and electronic graphic representation of advanced subsurface images; providing of training in geophysics.

Class 42: Oil prospecting using images obtained by sound wave scanning; geological prospecting; geological research; geological survey; geological and technical research; oil-field surveys and oil-field exploitation using images; analysis for oil-field exploitation; consultancy and advisory services in the field of geophysics; hosting high-performance computer sites (web sites);research in the high-performance computing field.

The contested goods and services are the following:

Class 16: Printed matter; printed matter; stationery and educational supplies; paper and cardboard; posters; photo albums and collectors’ albums; event albums; writing and stamping implements; writing stationery; writing instruments; blotters; newsletters; booklets; magazines [periodicals]; poster magazines; photographs; newspapers; cardboard; catalogues; pocket notebooks; colorboard [colored paperboard]; comic strips; envelopes; books; printing and bookbinding equipment; educational equipment; rub down transfers; stickers [stationery]; adhesive labels; paper; paper stationery; parchment paper; periodicals; printed periodicals; textbooks; handbooks [manuals]; prospectuses; industrial paper and cardboard; printed publications; educational publications; periodicals; promotional publications; promotional publications; graphic reproductions; printed advertisements; signboards of paper or cardboard; signboards of paper or cardboard; cardboard.

Class 41: Publishing services; publishing services (including electronic publishing services); publishing and reporting; publishing services carried out by computerised means; electronic text publishing services; publishing services for books and magazines.

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 ‘including’, used in the applicant’s list of services, indicates that the specific services listed following it are only examples of items included in the category of services preceding it, and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 16

The contested goods used as teaching materials, namely printed matter (which appears twice); educational supplies; books; booklets; educational equipment; textbooks; handbooks [manuals]; educational publications, are essential for educational services, such as the opponent’s providing of training in geophysics in Class 41. Although the opponent’s services relate to a highly specialised field, they have the same characteristics as training services in any other field.

Therefore, these contested goods and the opponent’s training services are complementary. This is because, in order to supply the opponent’s services, it is both helpful and usual to use the contested goods. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin and distribution channels, and, given that the goods complement the services, these goods and services are considered similar.

The contested stationery; paper and cardboard; posters; photo albums and collectors’ albums; event albums; writing and stamping implements; writing stationery; writing instruments; blotters; newsletters; magazines [periodicals]; poster magazines; photographs; newspapers; cardboard; catalogues; pocket notebooks; colorboard [colored paperboard]; comic strips; envelopes; printing and bookbinding equipment; rub down transfers; stickers [stationery]; adhesive labels; paper; paper stationery; parchment paper; periodicals; printed periodicals; prospectuses; industrial paper and cardboard; printed publications; periodicals; promotional publications; promotional publications; graphic reproductions; printed advertisements; signboards of paper or cardboard; signboards of paper or cardboard; cardboard are paper and cardboard, different goods made from paper and cardboard, and office requisites.

The opponent’s goods in Class 9 are specialised systems, apparatus and instruments used for processing images. The opponent’s services in Class 41 include digital imaging services and electronic graphic representation services related to very particular images, namely advanced subsurface images. The opponent’s services in Class 41 also include the training services (i.e. in geophysics) referred to above. Finally, the opponent’s services in Class 42 are specialised services relating to prospecting, oil-related services, geological research, consultancy and advice in the field of geophysics, hosting of a specific type of website, and research in relation to a specific computing field.

According to these descriptions, the contested stationery; paper and cardboard; posters; photo albums and collectors’ albums; event albums; writing and stamping implements; writing stationery; writing instruments; blotters; newsletters; magazines [periodicals]; poster magazines; photographs; newspapers; cardboard; catalogues; pocket notebooks; colorboard [colored paperboard]; comic strips; envelopes; printing and bookbinding equipment; rub down transfers; stickers [stationery]; adhesive labels; paper; paper stationery; parchment paper; periodicals; printed periodicals; prospectuses; industrial paper and cardboard; printed publications; periodicals; promotional publications; promotional publications; graphic reproductions; printed advertisements; signboards of paper or cardboard; signboards of paper or cardboard; cardboard are dissimilar to the opponent’s goods and services, since they differ in nature, purpose and method of use, and do not have the same distribution channels or points of sale. They are neither complementary nor in competition, and they do not target the same consumers. Finally, the opponent’s goods and services are highly specialised, since they belong to or relate to complex technical fields (e.g. subsurface imaging, geophysics, oil prospecting, high-performance computer sites), and they are not likely to be produced/provided by the same kinds of companies that produce the contested goods.

Contested services in Class 41

The contested publishing services; publishing services (including electronic publishing services); publishing and reporting; publishing services carried out by computerised means; electronic text publishing services; publishing services for books and magazines consist of the production and issuing of texts, sometimes accompanied by images, either printed or in digital format (e.g. published online).

According to the description of the opponent’s goods and services given above, the contested services are dissimilar to the opponent’s goods and services. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, and they do not target the same consumers. Finally, the opponent’s goods and services are highly specialised, since they belong to or relate to complex technical fields (e.g. subsurface imaging, geophysics, oil prospecting, high-performance computer sites), and they are not the likely to be produced/provided by the same kinds of companies that offer the contested services.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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.

Visually, the earlier mark includes a white rectangle with a dark-blue frame. Within this frame is the word ‘KALEIDOSCOPE’, written in standard dark-blue upper case letters, positioned in the centre of the lower part of the rectangle. In the upper right part of the rectangle is a blue square containing the word ‘REPSOL’ and an abstract device depicted in orange, white and red.

The contested sign is formed of the word ‘KALEIDOSCOPE’, written in standard dark-blue upper case letters, except for the letter ‘A’, which leans to the right, and the second letter ‘O’, which is a silver circle containing the number 85. Part of the public may perceive this circle as a depiction of a coin.

The signs are visually similar to the extent that they both contain the verbal element ‘KALEIDOSCOPE’ in blue upper case letters in a highly similar typeface.

The marks differ in the rectangle with a blue border and the square containing the abstract element and the word ‘REPSOL’ of the earlier mark, and in the stylisation of the letter ‘A’ and the silver circle containing the number 85 in the contested sign.

Aurally, the earlier mark contains two verbal elements. Due to their different positions and sizes (i.e. ‘KALEIDOSCOPE’ is larger and positioned in the centre of the lower part of the mark, whereas ‘REPSOL’ is smaller and positioned in the upper right part of the mark), the earlier mark can be referred to aurally in two different ways. Part of the public will pronounce the word ‘kaleidoscope’ (i.e. /ka/lei/do/scope/) only and another part of the public will refer to it by pronouncing that word accompanied by the word ‘repsol’ (i.e. /rep/sol/).

The contested sign contains the verbal element ‘KALEIDOSCOPE’ and the number 85 (pronounced ‘eighty-five’). Part of the public will refer to this mark by pronouncing only the word ‘KALEIDOSCOPE’, as it has more visual impact than the number. Part of the public will pronounce the word ‘kaleidoscope’ accompanied by ‘eighty-five’.

Although the second letter ‘O’ of the contested mark is depicted as a silver circle, this does not change its pronunciation as the vowel ‘o’, and the contested sign will be referred to aurally by pronouncing the word ‘kaleidoscope’ (i.e. /ka/lei/do/scope/).

Therefore, for the part of the public that pronounces only the word ‘kaleidoscope’ when referring to both marks, the signs are aurally identical.

For the part of the public that also pronounces the word ‘repsol’ when referring to the earlier mark and/or the part of the public that also pronounces the number ‘eighty-five’ when referring to the contested sign, the signs are aurally similar because they coincide in the sound of the word ‘kaleidoscope’.

Conceptually, English-speaking consumers understand the word ‘kaleidoscope’ as the English word used to refer to ‘an optical toy for producing symmetrical patterns by multiple reflections in inclined mirrors enclosed in a tube. Loose pieces of colored glass, paper, etc, are placed between transparent plates at the far end of the tube, which is rotated to change the pattern’ (see Collins English Dictionary Online).

Since this word is contained in both marks, the signs are conceptually similar to this extent.

Regarding the concept of the rest of the elements in the earlier mark, the word ‘REPSOL’ and the abstract figurative element have no concept for the public referred to. The rectangle with a blue frame and the blue square inside it convey the concepts of the shapes they represent. These concepts are not present in the contested sign and, therefore, constitute conceptual differences between the marks.

The silver circle in the contested sign contains the number 85, which conveys the concept of the number it represents. Part of the public may perceive this circle as a depiction of a coin and, therefore, the contested mark will be perceived as also conveying the concept of a coin. These concepts are not present in the earlier mark and, therefore, constitute conceptual differences between the marks.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

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

The earlier mark is formed of a rectangle with a blue frame that surrounds the rest of the elements. This shape is merely decorative and has a low degree of distinctive character. The same applies to the blue square in the upper right part of the sign. The rest of the elements in the mark (i.e. the words ‘KALEIDOSCOPE’ and ‘REPSOL’ and the three-coloured abstract device) are of average distinctiveness for the goods and services in question.

The elements forming the contested mark, namely the word ‘KALEIDOSCOIPE’ and the silver circle containing the number 85 (or a coin), are of average distinctiveness. Therefore, this sign has no element that is more distinctive than any of the others.

The earlier mark has no element that could be considered more dominant (visually eye‑catching) than other elements. Although the elements in the mark are of different sizes and occupy different positions, they all have the same visual impact.

The verbal element ‘KALEIDOSCOPE’ in the contested sign is the dominant element, as it is the most eye‑catching, including the silver circle acting as a letter ‘O’. The number 85 inside that shape has less visual impact, and is likely to be overlooked by part of the public when perceiving the mark visually. This is because of the small size of the number 85, and the thin lines that form the numbers.

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 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 some elements with a low degree of distinctive character in the mark as stated above in section c) of this decision.

5. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be similar are directed at the public at large, and the degree of attention paid by consumers during their purchase is deemed to be average.

6. Global assessment, other arguments and conclusion

The signs are visually, aurally and conceptually similar. The contested goods are partly similar and partly dissimilar to the opponent’s goods and services, and the contested services are dissimilar to the opponent’s goods and services.

The similarities between the marks lie in the word ‘KALEIDOSCOPE’. This word is present in both marks, in a similar typeface and in the same colour. This word is the largest element in the contested mark, and the largest verbal element in the earlier mark. It is of average distinctiveness in relation to all the goods and services involved.

The marks differ in the slightly different typefaces and in the figurative elements of the earlier mark (i.e. the square, the rectangle and the abstract three-coloured device). The signs also differ in the typeface of the letter ‘A’ in the contested mark (i.e. leaning to the right), in the silver circle and the number 85 inside the circle in the contested mark, and in the verbal element ‘REPSOL’ inside the square of the earlier mark. Finally, the marks also differ conceptually, as outlined in section b) above.

However, the difference in typeface is hardly perceptible, since the font in which the word ‘KALEIDOSCOPE’ is written in the marks is highly similar and in the same dark-blue colour. The letter ‘A’ leaning to the right in the contested sign is not visually outstanding, and does not in itself create a significant visual difference between the marks.

The differing rectangle and square of the earlier mark have a low degree of distinctive character. The differing abstract device of the earlier mark is not referred to aurally in any way and, therefore, does not create an aural difference between the marks. It is not visually outstanding, and does not overshadow the similarity between the marks that lies in the word ‘KALEIDOSCOPE’.

In the contested mark, the differing silver circle, and the number 85 inside it (for the part of the public that perceives the number) are clearly not able to overshadow the similarity between the marks that lies in the word ‘KALEIDOSCOPE’. Even if the concept of the number and/or a coin are perceived in the mark, and regardless of the fact that the number ‘eighty-five’ may be pronounced when referring to it, the similarity lying in the word ‘KALEIDOSCOPE’ is striking, as it is the only word in the contested sign and the dominant element in it.

Regarding the impact of the differing figurative elements, it must be noted that, 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 0233/2011-4, Best Tone, § 24; decision of 13/12/2011, R 0053/2011-5, Jumbo, § 59).

As explained, it is likely that at least part of the public will refer to the marks by pronouncing only the word ‘KALEIDOSCOPE’ and, therefore, the marks would be aurally identical for this part of the public.

Even for the part of the public that pronounces the word ‘REPSOL’ and/or the number ‘eighty-five’, it is likely that the marks will be perceived as two variations of the same mark when used in relation to similar goods and services. This is because the coinciding word ‘KALEIDOSCOPE’ is depicted in a similar typeface in the marks, is depicted in dark blue in both marks and is distinctive and the largest verbal element in both marks.

The degree of attention paid by consumers is likely to be average.

According to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Based on this, consumers might believe that the conflicting goods and services come from the same undertaking or economically-linked undertakings.

With regard to the principle of interdependence (i.e. a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and vice versa), it is considered that the visual, aural and conceptual similarities between the signs, together with the similarity of some of the goods and services involved, are enough to outweigh the dissimilarities between the signs, and may make at least part of the public believe that the conflicting goods and services found to be similar come from the same undertaking or economically-linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the word ‘kaleidoscope’. In support of its argument, the applicant refers to several trade mark registrations in the United States, France, Spain, Denmark, the United Kingdom, etc.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘kaleidoscope’. 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 public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The public taken into account for the analysis above is the English-speaking part of the relevant public. Likelihood of confusion exists for all the goods that are similar to the opponent’s goods and services.

It is a result of the unitary character of the Community trade mark, laid down in Article 1(2) CTMR, that an earlier Community trade mark has identical protection in all Member States. Earlier Community trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Community. It follows that the principle laid down in Article 7(2) CTMR, which provides that it is sufficient that an absolute ground for refusal exists in only part of the Community for a trade mark application to be refused, applies, by analogy, to a relative ground for refusal under Article 8(1)(b) CTMR.

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 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

Ric WASLEY

Alexandra APOSTOLAKIS

Wolfgang SCHRAMEK

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.