OPPOSITION No B 2 565 839

Great Parkland s.r.o., 17. listopadu 237, 530 02, Pardubice, Czech Republic (opponent), represented by Daněk & Partners, Vinohradská 17, 120 00, Prague 2, Czech Republic (professional representative)

a g a i n s t

Ventum Consulting GmbH & Co. KG, Infanteriestraße 19 Gebäude 3, 80797 München, Germany (applicant), represented by Kudlek & Grunert Patentanwälte, Theresienstr. 6, 80333 München, Germany (professional representative).

On 11/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 565 839 is partially upheld, namely for the following contested services:

Class 42: Technological consultation services; technical advice and consultancy.

2. European Union trade mark application No 13 708 607 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 13 708 607 ‘ventum’. The opposition is based on the following trade mark registrations:

- European Union trade mark registration No 5 785 688 ;

- European Union trade mark registration No 6 845 580 ;

- Czech trade mark registration No 291 247 .

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON EARLIER CZECH TRADE MARK REGISTRATION No 291 247

The Czech Trade Mark Office issued a decision and annulled the Czech trade mark registration No 291 247 in its entirety. The appeal filed against this decision was rejected and the decision become final on 05/08/2020 and the cancellation of the trade mark was published in the Czech official bulletin on 19/08/2020.

Following this decision, the opponent filed a request to suspend the effect of the revocation decision given by the Czech trade mark Office. This request was dismissed on 21/10/2020. Therefore the decision from the Office dated 05/08/2020 is legally valid and has to be taken into account in the present proceeding.

As a result, the opposition is rejected insofar as it is based on this earlier trade mark. The examination will proceed on the basis of the other earlier registrations invoked by the opponent, as indicated above.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 25/01/2018 the applicant requested evidence of use of the earlier EUTM No 6 845 580 in its observations in response to the opposition.

However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

a) The services

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

European Union trade mark registration No 5 785 688

Class 35: Rental of vending machines.

European Union trade mark registration No 6 845 580

Class 36: Real estate services included in this class, real estate brokerage - housing agents, brokerage in the rental and purchase of real estate, rental of real estate, including apartments, houses, offices, farms, apartment house management, real estate management, rent collection, accommodation bureaux (apartments), financial services - analysis, transactions, operations, financial information, consultancy and management, fiscal assessments, financial appraisals and assessments in the fields of insurance, banking, real estate, stocks and bonds brokerage, stock exchange quotations, financial sponsorship, hire-purchase financing, providing mortgage loans, financial rental - leasing, guarantees, assurance, surety (security), banking, credit bureaux services, financial clearing, clearing (financial), electronic funds transfer, capital investments, home-banking services, issuing of tokens of value, issuing of travellers' cheques, credit card services, issuance of credit cards, currency services and operations, money exchange services, insurance brokerage and consultancy, insurance services - insurance underwriting, including life, accident and fire insurance, health insurance underwriting, retirement payment services, mutual funds, insurance actuarial services (statistics), numismatic appraisal, appraisal of antiques, works of art, stamps and jewellery, debt collection agencies (factoring), business liquidation services, customs brokerage, charitable fund raising and other collections, safety deposit services, deposits of valuables, pawnbrokerage.

Class 37: Building and construction, construction of fireplaces, insulation of buildings against damp, thermal and sound insulation for buildings, demolition of buildings, metalwork and plumbing, chimney sweeping, painting, interior and exterior, plastering, wallpapering, scaffolding, roofing, masonry, locksmiths' services, building construction supervision, anti-rust treatment for vehicles, cleaning, polishing and washing of cars and other and vehicles, rental of construction, transport and other machines, namely diggers, bulldozers, cranes (lifting and hoisting apparatus), road sweepers, cleaning machines, cleaning of buildings (exterior surfaces), cleaning of buildings (interior), chimney sweeping, window cleaning services, street cleaning, rat exterminating, disinfecting, vermin exterminating (other than for agriculture), asphalting, road paving, mining extraction, quarrying services, drilling of wells, washing, ironing and pressing of linen, dry cleaning, maintenance, cleaning, restoration of furniture, cabinet making (repair), upholstering, varnishing, glazing, sanding, knife sharpening, laying of pipes and electricity cables in the ground and in the air, reconstruction and repair of electricity distribution and mining works, distribution and connection, building and reconstruction of structures, reconstruction and modernisation of energy equipment, control of industrial and technical equipment, for the management of electricity consumption, building construction, construction of power stations and equipment needed for the use thereof, monitoring and testing of electrical equipment, pressure equipment and gas apparatus, building construction - building structures, including modifications thereto, maintenance thereof and removal thereof.

Class 39: Freight forwarding and logistics, except the transport of oil products, transport and storage of waste, storage, transport, including bus transport, car transport, air transport, boat transport (sea and river), ferry-boat transport, rail transport, tram transport, hauling except the transport of oil products, passenger transport and goods transport except the transport of oil products, rental of buses, cars, boats, lorries, horses, rental of garages and parking spaces, piloting, armoured-car transport, ambulance transport, rental of motor racing cars, removal services, taxi transport, transport and storage of waste, delivery services, courier services, newspaper and magazine delivery, guarded transport of valuables, with and without escort, delivery of goods by mail order, packaging of articles, stevedoring, caddying services, vehicle towing, refloating of ships, warehousing of goods, rental of warehouses, storage of electronically stored data or documents, electricity, energy, heat, water distribution, transport by pipeline, tourist offices (except hotel reservation), including transport brokerage, arranging of tours, excursions, sightseeing, escorting of travellers, arranging of cruises, pleasure boat transport services, transport information, travel ticket reservation, booking of seats for travel, including for travel by air or by boat.

Class 43: Services for providing food and drink, restaurants and catering (food and drink), large-scale supply of food and drink to restaurants, cafes, temporary accommodation, catering and refreshments, boarding houses, hotels, hostels, motels, hosting services, restaurants, bars, snack bars, cafeterias, motorway service stations, public houses, canteens, refectories, fast food services, catering (food and drink), social catering, purchase and procurement of food, drink and refreshments, hospitality, preparation of food and drink for consumption, social catering, services for providing food and drink, preparation of food and drink for consumption, in particular steaks and vegetable and fruit salads, pizzas, pasta, services for providing food and drink, catering services, snack bars included in this class, services for providing food and drink, food preparation and cold food production, catering, pizzerias, buffets, self service restaurants, cafés, wine bars, hotel services consultancy, food and drink consultancy, providing hotel accommodation, rental of apartments, of halls, of lounge bars and of other non-residential space included in this class, hotel and catering consultancy, temporary accommodation, boarding house bookings, boarding for animals, providing campground facilities, holiday camp services, nursery schools, retirement homes, rental of transportable buildings, rental of conference facilities, rental of tents, rental of chairs, of tables, of place mats, of drinking glasses.

The contested services are the following:

Class 35: Strategy, management and business process consultancy; business consultancy in the field of information technology; cost-benefit analysis; business management and organization consultancy; professional business consulting; commercial management of the licensing of goods (including software products) and services, for others; organisational project management in the field of electronic data processing; procurement services, namely purchasing computer hardware and software for others; professional business project management in the fields of information systems design, specification, procurement, installation and implementation.

Class 41: Education and teaching, namely conducting courses, seminars, workshops and training courses in the fields of the development and implementation of computer software, IT architecture, computer software applications, commercial activities and business operations, and distribution of course material in connection therewith; Development of teaching material, for others, in the fields of the development and implementation of computer software, IT architecture, computer software applications, commercial activities and business operations.

Class 42: Development of computer software for use in the design, installation and implementation of mainframe and client-server application programs, for the integration of companies' financial, production and sales functions, and for the management of companies' customer services and customer support functions; IT services, excellence consultancy; technological consultation services; technical project management in the fields of the design, specification, procurement, installation and implementation of information systems; technical IT support with regard to the intercommunication of information between companies; computer services, namely design of computer systems, for others, and providing databases in the fields of business consultancy, information technology, computers and computer systems; consultancy in the fields of computers, computer systems, and development of computer systems; updating of computer software; planning, design and maintenance of internet sites; consultancy with regard to the design of homepages and internet pages; telecommunications engineering consultancy; services of an EDP programmer; electronic data security; computer programming; configuring computer networks by means of software; quality control; server administration; security services for protection against illegal network access; technical advice and consultancy; technical project management in the field of electronic data processing.

Preliminary remarks

It is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Moreover, an interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s list of 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 services specifically listed.

Contested services in Class 35

The contested services in Class 35 consist in business management and business consultancy services, and purchasing for others of computer hardware and software.

Business management and consultancy services are usually rendered by business consultants who 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. These services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning.

Purchasing for others consist in acting as an agent in buying goods or merchandise for persons or companies.

The opponent’s services in Class 35 are rental of vending machines. They have no relevant point in common with the contested services in Class 35: they are of different nature and purpose, they are not provided by the same undertakings. They are not complementary or in competition. Therefore they are dissimilar.

Likewise, the contested services are also dissimilar to the remaining opponent’s services which consist mainly in real estate, financial and insurances services (Class 36), building and construction, disinfection, cleaning services (Class 37) transport and storage services, rental of garages and parking spaces (Class 39) and restauration and temporary accommodation services, nursery schools, retirement homes, rental of building and furniture (Class 43); they do not have any relevant point in common with the contested services and the public would not expect such services to be offered by the same (or economically linked) undertakings. They are of different nature and purpose, have different distribution channels and providers. Finally they are not complementary or in competition.

Contested services in Classes 41

The contested services consist in education and teaching services in the field of IT. Such services do not present any relevant point in common with the opponent’s services in Classes 35, 36, 37, 39 and 43. The contested services aimed in supply education services and have no connection with the opponent’s services. They are not usually offered by the same companies and do not necessary target the same public. They are of different nature and purpose, have different distribution channels. They are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 42

The contested technological consultation services; technical advice and consultancy are similar to a low degree to the opponent’s construction services in Class 37 as they can target the same public and have the same distribution channels. Moreover, they are complementary.

The contested development of computer software for use in the design, installation and implementation of mainframe and client-server application programs, for the integration of companies' financial, production and sales functions, and for the management of companies' customer services and customer support functions; IT services, excellence consultancy; technical project management in the fields of the design, specification, procurement, installation and implementation of information systems; technical IT support with regard to the intercommunication of information between companies; computer services, namely design of computer systems, for others, and providing databases in the fields of business consultancy, information technology, computers and computer systems; consultancy in the fields of computers, computer systems, and development of computer systems; updating of computer software; planning, design and maintenance of internet sites; consultancy with regard to the design of homepages and internet pages; telecommunications engineering consultancy; services of an EDP programmer; electronic data security; computer programming; configuring computer networks by means of software; quality control; server administration; security services for protection against illegal network access; technical project management in the field of electronic data processing services consist in development of computer software, computer programming, and other IT related services. They do not present any relevant point in common with the opponent’s services in Classes 35, 36, 37, 39 and 43. They are not usually offered by the same companies and do not necessary target the same public. They are of different nature and purpose, have different distribution channels. They are not complementary or in competition. Therefore, they are dissimilar.

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.

In the present case, the services found to be similar to a low degree are directed at the public at large as well as professionals. Taking into account that the relevant services are specialised and are relatively expensive, the degree of attention is considered to be higher than average.

c) The signs

	Ventum
Earlier trade marks	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is composed of the verbal element ‘VENTUS’ depicted in bold dark red upper case letters, slightly inclined. This element is placed on a figurative element which consist of a letter ‘V’, the left part depicted in green, as well as the space between the two bars, and the right part in dark red. The word ‘VENTUS’ is meaningless and distinctive to an average degree. The figurative element will be perceived as the depiction of the first letter of the verbal element and therefore somewhat less distinctive.

The contested sign is a word mark consisting of the term ‘Ventum’ which is meaningless and therefore distinctive to an average degree. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the contested sign is depicted as a capitalised word whereas the verbal element of the earlier mark is depicted in upper case letters with a slight inclination.

Visually, the signs coincide by the string of letters ‘Ventu-’ of their verbal elements, placed in the same order. These verbal elements differ by their final letter, ‘S’ in the earlier mark and ‘m’ in the contested sign. The signs also differ by the graphic depiction of the earlier mark, including its figurative element and colors.

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. MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VENTU-’, present identically in both signs, and only differ by the sound of their final letters ‘S’ in the earlier mark and ‘m’ in the contested sign.

As a consequence, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark are particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 services 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 contested services are partly similar to a low degree and partly dissimilar. They target the relevant public as well as professionals. The degree of attention is higher than average.

The signs coincide in the string of letters ‘VENTU-’, which constitutes 5 identical letters out of 6 composing the only verbal element in each mark. They differ by the final letter and the graphical depiction and colours of the earlier sign, which are of secondary importance. It follows that the signs are visually similar to an average degree and aurally similar to a high degree. As none of the signs has a meaning, the conceptual aspect does not influence the assessment and cannot help the consumers to distinguish between the signs.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations.

It follows that the contested trade mark must be declared invalid for the contested services found to be similar to a low degree considering the similarities between the signs.

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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Frédérique SULPICE

Julie, Marie-Charlotte HAMEL

Richard BIANCHI

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.