OPPOSITION No B 2 499 534

Inspectoría de Nuestra Señora de la Merced, Plaza Artos, 3, 08017 Barcelona, Spain (opponent), represented by Clarke, Modet & Co., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Porto Editora Lda., Rua da Restauração n.º 365, 4099 Porto, Portugal (applicant), represented by Carlos José Batalhao, Praça Bom Sucesso nº 61, 1010, 1450-14 Porto, Portugal (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 499 534 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 727 219. The opposition is based on Spanish trade mark registration No 2 929 159. The opponent invoked Article 8(1)(b) 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.

1. The goods and services

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

Class 9: Downloadable electronic publications, magnetic and optical data for reproducing sound, data processing (educational software), teaching apparatus and instruments.

Class 41: Education, training, entertainment, sporting and cultural activities, publishing services; non-downloadable electronic publications.

Class 42: Scientific and technological services and research and design relating thereto services; services industrial analysis and research; design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Software, education software.

Class 16: Books.

Class 41: Education; teaching; career counseling [education]; education information; education and instruction.

Class 42: Maintenance of websites and hosting on-line web facilities for others.

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 software and education software include, as broader categories, the opponent’s data processing (educational software). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 16

The contested books are similar to the opponent’s downloadable electronic publications in Class 9. They all consist of written documents or works and, though these goods differ in the formats in which they are made available, because books are printed in paper and downloadable electronic publications transfer the information or data to a computer or a peripheral device, they share the same purpose, are in competition with each other, they target the same public and may be produced by the same providers.

Contested services in Class 41

The contested education, teaching, career counseling [education], education information, education and instruction are included in the broad category of the opponent’s education services. Therefore, they are identical.

Contested services in Class 42

The contested maintenance of websites and hosting on-line web facilities for others are similar to the opponent’s design and development of computer software services to the extent that they can be provided by the same providers, target the same end users and coincide in their distribution channels. Therefore, they are similar.

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 goods and services found to be identical or similar are directed at both the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary between average and higher than average, depending on the price of the relevant goods and services and on the frequency of their purchase.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression 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 earlier sign is a figurative mark consisting of a red rectangle which contains three white words inside written in lower case standard typeface, in 3 different lines and sizes. The first word ‘escola’ is written in thin letters, the word ‘virtual’ in the second line is depicted in bigger, thicker bold letters and stands out visually within the overall impression of the sign and the word ‘edebé’, in smaller size letters, occupies the third position.

The contested sign is also a figurative mark composed of words and figurative elements depicted in two lines. The first line contains a black circle with a white bold ‘e’ followed by a smaller red ‘v’ in a higher position. This letter combination ‘ev’ is likely to be perceived by the public as the acronym of the expression that follows it, ‘escola virtual’, written in small standard black typeface in which the word ‘escola’ is written in thick bold letters and the word ‘virtual’ in thin letters. The second line contains three rectangles in blue, red and green respectively, followed by the expressions ‘PORTO EDITORA’ ‘AREAL EDITORES’ ‘RAIZ EDITORA’ in black capital letters, separated among each other with black dots.

The elements represented on the first line of the contested sign constitute the dominant part of it due to their considerable bigger size and position (they are visually more eye-catching) and the letters ‘ev’ are distinctive even if they are perceived as the acronym of the expression ‘escola virtual’.

As indicated by the opponent, the signs at issue coincide in the expression ‘escola virtual’ that will be understood by the relevant public.

Indeed, the word ‘escola’ will be perceived by the public as an indication of a place where instruction in a particular skill or field is given, on account of its close resemblance with the Spanish word ‘escuela’ which means ’school’ (information extracted from Wordreference Dictionary online on 12/07/2016 at http://www.wordreference.com/es/en/translation.asp?spen=escuela ).

The word ‘virtual’ is a Spanish word that means ‘virtual’ (information extracted from Wordreference Dictionary online on 12/07/2016 at http://www.wordreference.com/es/en/translation.asp?spen=virtual ) and will be associated by the relevant public as ‘a computer generated environment’.

These two words together form a grammatically correct expression ‘virtual school’ that will be understood by the relevant public as a ‘computer generated environment where instruction in a particular skill or field is given’. Bearing in mind that the relevant goods and services are related to education, maintenance and hosting of websites (which would include those for education purposes), this expression is an indication of the kind and subject matter of the goods and services. Hence the public will understand this non-distinctive expression in relation to the goods and services at issue. Consequently, the impact of this non-distinctive expression is limited when assessing the likelihood of confusion between the marks at issue.

Likewise, the words ‘editora’ and ‘editores’, of the contested mark, mean ‘publisher’ and ‘publishers’ respectively (information extracted from Wordreference Dictionary online on 12/07/2016 at http://www.wordreference.com/es/en/translation.asp?spen=editores ) and the word ‘raíz’, also in the contested mark, means ‘origin’ (information extracted from Wordreference Dictionary online on 12/07/2016 at http://www.wordreference.com/es/en/translation.asp?spen=raiz). Bearing in mind that the relevant goods and services are all related to education, maintenance and hosting of websites (which would include those for education purposes), these words are non-distinctive as they simply identify the publishers as the source of the goods and services. Consequently, the impact of these non-distinctive words is limited when assessing the likelihood of confusion between the marks at issue.

The word ‘edebé’ has no meaning and is the distinctive element of the earlier mark.

The words ‘PORTO’ and ‘AREAL’ placed in the second line of the contested mark have no meaning either.

Visually, the signs coincide in the non-distinctive words ‘escola virtual’. However, the coinciding words are depicted in slightly different styles, different colours and backgrounds (as explained above). Furthermore, the earlier mark contains the word ‘edebé’, in the third position which has no counterpart in the contested mark and the contested mark has additional words and figurative elements in colour which have no counterparts in the earlier mark. The first line of elements of the contested sign is dominant due to its size in contrast with those depicted in its second line.

Bearing in mind that the signs coincide in a non-distinctive expression, they are similar to a low degree.

Aurally, the pronunciation of the signs identically coincides in the sound of the syllables of the non-distinctive words ‘ES/CO/LA’ ‘VIR/TU/AL’. Their pronunciation differs in the sound of the distinctive word of the earlier sign ‘EDEBÉ’, in the first letters of the contested mark ‘ev’, which are also distinctive and in the words ‘PORTO EDITORA’ ‘AREAL EDITORES’ ‘RAIZ EDITORA’.

Therefore, the marks are aurally similar to a low degree. However, this aural similarity has a limited impact on the assessment of likelihood of confusion, since it is based on an element which is weak, as stated above.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the expression ‘escola virtual’ will be associated with a computer generated environment where instruction in a particular skill or field is given (as explained above) due to the close resemblance of the word ‘escola’ to the equivalent word ‘escuela’ in Spanish and to the fact that the word ‘virtual’ is a word in Spanish.

The words ‘EDITORA’ ‘EDITORES’ and ‘RAIZ EDITORA’ of the contested mark are also non-distinctive because they will be perceived as a reference to the publishers as the source of the goods and services at issue (as explained above).

The word ‘edebé’ of the earlier sign has no meaning and the letters ‘e’ and ‘v’ of the contested mark that will be interpreted as individual letters they constitute the distinctive elements of each of the signs at issue respectively even if the letters ‘ev’ are likely to be perceived by the relevant public as the acronym of the expression ‘escola virtual’.

To this extent, as part of the signs will be associated with an identical meaning, they are similar to a low degree

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 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 non‑distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods and services have been found to be identical and similar and the consumer’s level of attention varies from average to high.

The signs coincide in the non-distinctive expression ‘escola virtual’ which, as indicated above, indicates that the education (material and services), the maintenance and hosting of websites (which would include those for education purposes), are provided virtually.

The opponent claims that the contested mark is dominated by the word elements ‘escola virtual’ and that the remaining figurative elements of which it is composed are negligible in the impression it produces.

Even if this was true, it is also true that the similarities between the signs concern elements which are not distinctive and, therefore, they are not sufficient to lead to a likelihood of confusion on the part of the public.

In this sense, attention has to be paid to the differing additional elements, graphic representations, colours, backgrounds and respective structures of each of the signs at issue.

The applicant claims that the marks are different from each other and that the earlier mark also has the word ‘edebé’.

The Opposition Division agrees with this statement. The word ‘edebé’ contained in the earlier mark, though placed in the third line and in smaller case, is the only element of the earlier sign that has no meaning and will be perceived as the distinctive element of this sign by the relevant public.

Consequently, the different structures and compositions of the signs at issue and their additional and differing elements (some of which are also more distinctive than the coinciding element), are clearly perceivable and sufficient to exclude any likelihood of confusion bearing in mind that the only coincidence in the non-distinctive expression ‘escola virtual’ is not sufficient to lead to a likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Patricia LOPEZ FERNANDEZ DE CORRES

Vita VORONECKAITĖ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.