OPPOSITION No B 2 579 400

Constant Inversiones, S.A., Avda Diagonal 523, Pl.21, 08029 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Constant Creative Limited, G/F, 35 First Street, Sai Yin Pun, Hong Kong, the Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Wivi H. Larsen, Banegårdsvej 1, 2600 Glostrup, Danemark (professional representative).

On 30/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 579 400 is partially upheld, namely for the following contested services:

Class 35:

Advertising and marketing consultancy; Advisory services relating to corporate identity; Providing marketing consulting in the field of social media; Advertising, marketing and promotional services; Business consultancy services relating to marketing; Digital advertising services; Corporate identity services; Design of advertising materials; Brand positioning services; Planning of marketing strategies; Graphic advertising services; Brand positioning services; Brand creation services; Marketing agency services; Advertising agency services.

Class 42:

Brand design services; design of brand names; design of logos for corporate identity; design of signs; research relating to design; brand design services.

2. European Union trade mark application No 13 737 911 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 13 737 911. The opposition is based on Spanish trade mark registration No 2 633 085. 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 services

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

Class 35:

Advertising. Business management, business administration, office functions, assistance for the operation or management of a commercial company, assistance in the direction of the business or commercial functions of a company, recruitment and selection of personnel services, secretarial services.

The contested services are the following:

Class 35:

Advertising and marketing consultancy; Advisory services relating to corporate identity; Providing marketing consulting in the field of social media; Advertising, marketing and promotional services; Business consultancy services relating to marketing; Digital advertising services; Corporate identity services; Design of advertising materials; Brand positioning services; Planning of marketing strategies; Graphic advertising services; Brand positioning services; Brand creation services; Marketing agency services; Advertising agency services.

Class 42:

Brand design services; Design of brand names; Design of logos for corporate identity; Design of signs; Design of printed material; Design of stationery; Design services relating to shop displays; Graphic design for the compilation of web pages on the internet; Graphic arts design; Packaging design; Research relating to design; Web site design consultancy; Brand design services; Interior design; Product design.

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

Advertising is identically contained in both lists of services.

The contested marketing and promotional services; marketing agency services; advertising agency services; digital advertising services; planning of marketing strategies; brand positioning services (enumerated twice); business consultancy services relating to marketing; advertising and marketing consultancy; providing marketing consulting in the field of social media; brand creation services; design of advertising materials; graphic advertising services are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested advisory services relating to corporate identity; corporate identity services are services related to presenting an organisation to the public, customers and employees. These services have some relevant points in common with the opponent’s advertising, as they have the same nature and purpose (helping to increase sales) and they may target the same public. These services are, therefore, similar.

Contested services in Class 42

The contested brand design services; design of brand names; design of logos for corporate identity; design of signs; research relating to design; brand design services are similar to the opponent’s advertising services, as they are aimed at creating a particular identity or image of an undertaking and its products. They are usually rendered by advertising agencies, target the same public and are offered through the same channels.

The contested design of printed material; design of stationery; design services relating to shop displays; graphic design for the compilation of web pages on the internet; graphic arts design; packaging design; web site design consultancy; interior design; product design are services for the creation and development of the functionality and appearance of specific products or environments. They are usually rendered by graphic designers, interior designers and architects. They clearly differ in nature, purpose and method of use from the opponent’s services. Furthermore, these services do not coincide in their providers or end users and are not complementary or in competition. 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 are directed at professionals. The services at issue are specialised services, such as advertising directed at business customers with specific professional knowledge or expertise. The degree of attention is considered higher than average.

3. The signs

	Constant
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 mark is a figurative mark consisting of the verbal elements ‘GRUPO’ and ‘CONSTANT’; these elements are slightly stylised and are green and blue, respectively. The word ‘GRUPO’ is to the left of and smaller than the word ‘CONSTANT’. The centre of the letter ‘O’ of ‘GRUPO’ is filled in green and this letter overlaps with the letter ‘C’ of the word ‘CONSTANT’.

In the case of marks consisting of word and figurative components, the word component of the sign usually has a stronger impact on consumers than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component.

The contested sign is composed of eight letters, ‘Constant’.

The contested sign, consisting of one word, has no element that could be considered clearly more distinctive and more dominant (visually eye-catching) than other elements.

The element ‘CONSTANT’ in the earlier sign is the dominant element as it is the most eye-catching (it is in larger letters).

The element ‘GRUPO’ in the earlier sign will be perceived by the Spanish public as an association of companies under single ownership and control, consisting of a holding company, subsidiary companies and, sometimes, associated companies. Bearing in mind the relevant services, it is considered that the distinctiveness of this element is rather low for these services, because they can all be sold or offered by a group (of companies). The relevant public understands the meaning of this element and will pay less attention to this weak element than to the other, more distinctive, elements of this sign. It is also less eye-catching due to its smaller size.

The word ‘CONSTANT’, included in both marks, will be perceived, by a part of the relevant public, as a misspelling of the Spanish adjective ‘constante’, meaning constant and continuous. Therefore, it could allude to the fact that the services are provided in a constant or continuous way. For this part of the relevant public, this element has a lower degree of distinctiveness. However, the remaining part of the public will not understand it, as it is an English word, and, therefore, will not associate it with any meaning. Therefore, for the remaining part of the relevant public, this element has a normal degree of distinctiveness.

Visually, the signs coincide in the element ‘CONSTANT’, which is the only element of the contested sign. They differ in the slight stylisation and colours of the earlier sign and in the additional element ‘GRUPO’ at the beginning of the earlier sign, which has no counterpart in the contested sign. However, the element ‘GRUPO’ is less eye-catching due to its size. Therefore, the signs are similar to an average degree.

Aurally, the signs coincide in the sound of the distinctive element ‘CONSTANT’, present identically in both signs. The pronunciation differs in the sound of the additional word ‘GRUPO’ at the beginning of the earlier sign, which has no counterpart in the contested sign. The differing component is a weak element. Therefore, the signs are similar to an average degree.

Conceptually, the word ‘CONSTANT’, included in both marks, will be perceived, by a part of the relevant public, as a misspelling of the Spanish adjective ‘constante’, meaning constant and continuous. However, the remaining part of the relevant public will not understand it, as it is an English word, and will not associate it with any meaning. The element ‘GRUPO’ of the earlier sign will be perceived as indicating ‘an association of companies under a single ownership and control, consisting of a holding company, subsidiary companies, and sometimes associated companies’. As the signs will be perceived by a part of the relevant public as referring to a Spanish adjective, the signs are conceptually similar to an average degree. However, for the remaining part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The services at issue are partly identical, partly similar and partly dissimilar and the degree of attention of the public is considered average to high.

The conflicting signs are similar to the extent that they coincide in the element ‘CONSTANT’, which is the only element of the contested sign, and has a normal degree of distinctiveness for at least a part of the relevant Spanish public.

The signs differ in the slight stylisation and in the word ‘GRUPO’ of the earlier sign. However, the word ‘GRUPO’ has less impact than the word ‘CONSTANT’ on the overall impression of the earlier sign, because it is considered weak in relation to the relevant services and because of its smaller size.

Therefore, the relevant consumers might be led – by the visual, aural and conceptual similarity between the signs (for a part of the relevant public), based on the word ‘CONSTANT’ – to believe that the identical or similar services covered by the marks come from the same undertaking or economically linked undertakings. Taking into account all the circumstances of the case, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish the marks and will perceive them as having the same origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 633 085.

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

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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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

Janja FELC

Reiner SARAPOGLU

Julia SCHRADER

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.