OPPOSITION No B 2 592 312

OPP Limited, Elsfield Hall, 15-17 Elsfield Way, Oxford OX2 8EP, United Kingdom (opponent)

a g a i n s t

IK Sirius, Seminariegatan 33 H, 752 28 Uppsala, Sweden (applicant), represented by Ahlford Advokatbyra AB, Fyristorg 6, 751 41 Uppsala, Sweden (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 592 312 is partially upheld, namely for the following contested services:

Class 41: Education and instruction in relation to sports and fitness; coaching in relation to sports and fitness; sports training; provision of information relating to sports.

2. European Union trade mark application No 14 340 301 is rejected for all the above services. It may proceed for the remaining goods and services, contested or not.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 340 301, namely against all the services in Class 41. The opposition is based on European Union trade mark registration No 12 336 831 and the non-registered trade mark ‘SIRIUS’ in the Netherlands, Estonia, the Czech Republic, Denmark, Poland, Hungary, the United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(1)(a) and (b), 8(4), 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 registration No 12 336 831.

1. The goods and services

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

Class 9: Computer software and applications for use in fields of human resources and evaluation of employee attributes, performance, profiles and comparisons; computer software for use in human resource management, consultancy and research, namely behavioural testing, skills testing, abilities testing, competency testing, personality evaluation, personality interpretation, personality assessment, personality testing; computer software for use in the administration, scoring, interpretation and reporting of personality tests, personality assessment, personality evaluation and personality interpretation; search engine software; software for searching databases for use in human resource management, consultancy and research, namely behavioural testing, skills testing, abilities testing, competency testing, personality evaluation, personality interpretation, personality assessment, personality testing; downloadable software; downloadable electronic publications, pre-recorded CD-ROMS, magnetic data carriers, pre-recorded data carriers providing manuals, test booklets, answer sheets, profile sheets, norm tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books particularly in the area of behavioural testing, skills testing, abilities, competency testing, personality assessment, personality evaluation and personality interpretation or the administration, scoring, interpretation and reporting of personality testing and personality assessment.

Class 16: Printed matter and printed publications relating to behavioural testing, skills testing, abilities testing, competency testing, personality assessment, personality evaluation and personality interpretation; paper testing materials for personality assessment, personality testing, skills testing; ability testing; competency testing; personal evaluation and personal interpretation; personality assessment and personality testing manuals, test booklets, answer sheets, profile sheets, norm-tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books, particularly relating to personality assessment, personality testing, skills testing, ability testing, competency testing, personal evaluation and personality interpretation, administration, scoring, interpretation and reporting of personality assessment, personality testing, skills testing, ability testing, personal evaluation and personality interpretation.

Class 35: Business consultation to assist in the fields of human resources and evaluation of employee attributes, performance profiles and comparisons; human resource management, task management and online content management; data processing services, for use in human resource management, consultancy and research, namely personality assessment, personality testing, skills testing, ability testing, competency testing, personality evaluation, personality interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, skills tests, ability tests, competency tests, personality evaluations and personality interpretation.

Class 41: Education and training services; education and training relating to personality assessment, personality testing, skills testing, ability testing, competency testing, personality evaluation and personality interpretation and the use of printed matter, printed publications and pre-recorded CD-ROM, magnetic data carrier or other pre-recorded data carriers in personality assessment, personality testing, skills testing, ability testing, competency testing, personality evaluation and personality interpretation; conducting workshops and training sessions in the field of personality testing, skills testing, ability testing, competency testing, personality assessment, personality evaluation and personality interpretation.

Class 42: Computer programming and data analysis services, relating to human resource management, consultancy and research, namely personality assessment, personality testing, skills testing, ability testing, competency testing, personality evaluation, personality interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personality evaluations and personality interpretation; creation of internet websites relating to human resource management, consultancy and research, namely personality assessment, personality testing, skills testing, ability testing, competency testing, personality evaluation, personality interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personality evaluations and personality interpretation.

Further to two limitations, the contested services are the following:

Class 41: Sports and fitness; Education and instruction in relation to sports and fitness; Organising of sporting events, competitions and sporting tournaments; Organisation of group recreational activities; Fan clubs; Leisure services; Club services in relation to sports and fitness; Organizing community sporting and cultural events; Sporting and cultural activities; Provision of sports and recreational services; Entertainment, sporting and cultural activities; Sports training; Sporting services; Provision of information relating to sports; Sporting and recreational activities; Sport camp services; Coaching in relation to sports and fitness.

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

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

The contested education and instruction in relation to sports and fitness; coaching in relation to sports and fitness; sports training are included in the broader category of the opponent’s education and training services. They are identical.

The opponent’s printed matter includes books in Class 16. These are similar to the contested provision of information relating to sports inasmuch as the latter could include publishing services, and, therefore, they could have the same producer. Furthermore, they are complementary.

The contested sports and fitness; sporting activities (listed three times in the applicant’s specification); sporting services; provision of sports; organising of sporting events, competitions and sporting tournaments; organisation of group recreational activities; fan clubs; leisure services; organizing community sporting and cultural events; provision of recreational services; entertainment and cultural activities (the latter repeated twice in the applicant’s specification); recreational activities; club services in relation to sports and fitness; sport camp services comprise a broad range of services including services relating to activities involving physical exertion and skills and/or intended to amuse, entertain, inform or divert people, whereas the opponent’s services in this class, namely education and training services, are offered to develop the mental faculties of persons or animals. These services belong to different areas of activity, and have different natures and purposes. Moreover, these services are not complementary or in competition. Therefore, they are considered dissimilar to the opponent’s services in Class 41.

These services are, in addition, not similar to any of the opponent’s goods and services in classes other than Class 41. They have different purposes, methods of use and relevant publics. They are not complementary nor do they substitute for each other.

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 the public at large and at professionals, especially in education, training and sport. The degree of attention is considered to vary from average to high, in view of the specific nature of the services in question and the degree of technical expertise they imply.

3. The signs

	SIRIUS
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, Spanish- and French-speaking parts of the relevant public.

The earlier mark is a figurative mark formed by the word ‘Sirius’ with a horizontal accent on the first ‘i’ and a half-circle accent on the ‘u’.

The contested sign is a word mark formed by the word ‘SIRIUS’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are represented in lower or upper case or a combination of those letters.

The coinciding verbal element, SIRIUS, is the Latin form of the name of a star; namely a fixed star of the first magnitude, the chief of the constellation Canis Major or Great Dog, and the brightest in the heavens; the dog-star (Oxford English Dictionary).

The marks have no elements that could be considered clearly more distinctive and/or dominant than other elements.

Visually, the signs coincide in ‘SIRIUS’. They differ only in the accents included in the earlier mark.

The stylisation arising from the slightly fancy accents of the earlier sign must be considered not particularly overwhelming and will not detract the consumer’s attention from the word ‘SIRIUS’.

Therefore, the signs are visually highly similar.

Aurally, the marks will be pronounced identically. The accents in the earlier mark will not give rise to different pronunciations in English, Spanish or French, since those accents do not belong to the alphabets in question. In any case, the marks are formed by the same letters placed in exactly the same order.

Therefore, the signs are identical from an aural point of view.

Conceptually, the public in the relevant territory will perceive the signs as referring to a constellation, as explained above.

The signs are therefore conceptually identical.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. 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 (recital 8 of the EUTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Furthermore, average consumers only 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).

The signs have been found visually similar to a high degree and aurally and conceptually identical.

The contested services have been found partly identical, partly similar to various degrees and partly dissimilar.

The public targeted is the public at large; their degree of attention is average.

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 partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 336 831.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 20/10/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/03/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 20/10/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/03/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Claudia ATTINÀ

Inés GARCIA LLEDO

Jessica LEWIS

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.