OPPOSITION No B 2 612 086

O2 Worldwide Limited, 20 Air Street, W1B 5AN, London, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD, Cambridge, United Kingdom (professional representative)

a g a i n s t

Sarah Campbell, 171 Queens Road Wimbledon, SW19 8NX London, United Kingdom (applicant).

On 15/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 612 086 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 462 022 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 462 022 for the word mark ‘GURU CARD’, namely against all the goods and services in Classes 9, 16 and 35. The opposition is based on, inter alia, European Union trade mark registration No 10 245 942 for the word mark ‘GURU TV’. The opponent invoked Articles 8(1)(b) and 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 10 245 942.

a) The goods and services

In the notice of opposition, the opponent’s mentioned that he wished to base its opposition on all the goods and services. Therefore, the relevant goods and services are, inter alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer software; computer software downloadable from the Internet; PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; computer software recorded onto CD Rom; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications (downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods; Animated cartoons; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; attracting and killing insects (electric devices for-); aviators (protective suits for-); aviators (protective suits for-); boats (fire-); breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration; cabinets for loudspeakers; cartoons (animated-); cartoons (animated-); cases (eyeglass-); cases (eyeglass-); cases (pince-nez); cases (pince-nez-); cases especially made for photographic apparatus and instruments; cases fitted with dissecting instruments [microscopy]; chains (eyeglass-); chains (eyeglass-); cigar lighters for automobiles; cleaning apparatus for phonograph records; cleaning apparatus for sound recording discs; clips for divers and swimmers (nose-); clips for divers and swimmers (nose-); clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; coils (holders for electric-); coin-operated gates for car parks or parking lots; computer game programs; computer keyboards; computer operating programs recorded; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software [recorded]; computer software, recorded; contact lenses (containers for-); contact lenses (containers for-); containers for contact lenses; containers for microscope slides; covers for electric outlets; cutting apparatus (electric arc-); cutting apparatus (electric arc-); diver's apparatus; divers' masks; divers' masks; diving suits; door closers, electric; door openers, electric; ear plugs; ear plugs for divers; electric arc cutting apparatus; electric arc welding apparatus; electric installations for the remote control of industrial operations; electric welding apparatus; electrified fences; electronic publications [downloadable]; electronic publications, downloadable; electroplating apparatus; elevator operating apparatus; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; face-shields (workmen's protective-); face-shields (workmen's protective-); fences (electrified-); filters for respiratory masks; fire (clothing for protection against-); fire (clothing for protection against-); fire beaters; fire blankets; fire boats; fire engines; fire hose nozzles; firemen (asbestos screens for-); firemen (asbestos screens for-); flat irons, electric; floats for bathing and swimming; furniture especially made for laboratories; galvanizing apparatus; garments for protection against fire; gates for car parks (coin-operated -); gates for car parks (coinoperated-); gloves for divers; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; goggles for sports; hair curlers, electrically heated; hair-curlers, electrically heated; helmets (protective-); helmets (protective-) for sports; helmets (protective-) for sports; helmets (riding-); helmets (riding-); holders for electric coils; insects (electric devices for attracting and killing-); insects (electric devices for attracting and killing-); interfaces [for computers]; interfaces for computers; irons (flat), electric; irons (flat-), electric; juke boxes [for computers]; juke boxes for computers; kits (hands free-) for phones; knee-pads for workers; laboratories (clothing especially made for-); laboratories (clothing especially made for-); lift operating apparatus; locks, electric; magnets; magnets (decorative-); magnets (decorative-); make-up removing appliances, electric; masks (divers'-); masks (divers'-); masks (protective-); masts for wireless aerials; micrometer screws for optical instruments; microscope slides (containers for-); monitors [computer programs]; motor fire engines; mouse pads; nets (safety-); nets (safety-); nets for protection against accidents; nose clips for divers and swimmers; nozzles (fire hose-); oxygen transvasing apparatus; pads (mouse-); pads (mouse-); peripheral devices (computer-); pince-nez cases; pince-nez chains; pince-nez cords; pince-nez mountings; plotters; plugs (ear-); plugs (ear-); programs (computer game-); programs (computer operating-) recorded; programs (computer-) [downloadable software]; protection devices against x-rays [roentgen rays], not for medical purposes; protection devices against x-rays [roentgen rays], not for medical purposes; protection devices against x-rays[roentgen rays], not for medical purposes; protection devices for personal use against accidents; protective helmets; protective helmets for sports; protective masks; protective suits for aviators; publications (electronic-), downloadable; push buttons for bells; railway traffic safety appliances; reflecting discs for wear, for the prevention of traffic accidents; reflecting discs, for wear, for the prevention of traffic accidents; respirators [other than for artificial respiration]; respirators for filtering air; respirators, other than for artificial respiration; respirators[ other than for artificial respiration]; respiratory masks [other than for artificial respiration]; respiratory masks, other than for artificial respiration; respiratory masks[other than for artificial respiration]; restraints (safety-), [other than for vehicle seats and sports equipment]; restraints (safety-), other than for vehicle seats and sports equipment; restraints (safety-), other than for vehicle seats and sports equipment; retorts' stands; riding helmets; road signs, luminous or mechanical; roentgen rays (protection devices against-), not for medical purposes; roentgen rays (protection devices against-), not for medical purposes; safety nets; safety restraints [other than for vehicle seats and sports equipment]; safety restraints, [other than for vehicle seats and sports equipment]; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; screens for firemen (asbestos-); screens for firemen (asbestos-); sealing plastics (electrical apparatus for-) [packaging]; shoes for protection against accidents, irradiation and fire; signs, luminous; socks, electrically heated; software (computer-), [recorded]; software (computer-), recorded; solderers' helmets; soldering apparatus, electric; soldering irons, electric; spark-guards; spectacle cases; spectacle frames; sports (goggles for-); sports (protective helmets for-); sports (protective helmets for-); stands for photographic apparatus; steering apparatus automatic for vehicles; steering apparatus, automatic, for vehicles; swimming belts; swimming jackets; teeth protectors; theft prevention installations, electric; traffic accidents (reflecting discs, for wear, for the prevention of-); tripods for cameras; turnstiles, automatic; vehicle breakdown warning triangles; vests (am) (bullet-proof-); waistcoats (bulletproof-); warning triangles (vehicle breakdown-); warning triangles (vehicle breakdown-); water wings; welding apparatus (electric arc-); welding apparatus (electric arc-); welding apparatus, electric; welding electrodes; wireless aerials (masts for-); wrist rests for use with computers; x-rays (protection devices against-), not for medical purposes; ear plugs for divers; masks (protective-); microscope slides (containers for-); protective masks; protective suits for aviators; solderers' helmets; spark-guards; traffic accidents (reflecting discs, for wear, for the prevention of-); vehicle breakdown warning triangles; workmen's protective face-shields; spectacle cases; spectacle frames; bullet-proof waistcoats (br) [vests (Am)].

Class 35: Advertising; business management; business administration; office functions; retail services and online retail services relating to scientific, nautical, surveying, photographic, cinematographic, optical weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, apparatus for the transmission of sound or image, telecommunications apparatus, mobile telecommunication apparatus, mobile telecommunications handsets, computer hardware, computer software, computer software downloadable from the Internet, PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers, telecommunications network apparatus, drivers software for telecommunications networks and for telecommunications apparatus, protective clothing, protective helmets, computer software recorded onto CD-Rom, SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic publications (downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone cases, magnetic cards, encoded cards; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network; rental of advertising time on communication media; Advertising space (rental of-); advice for consumers (commercial information and-) [consumer advice shop]; Auctioneering; business investigations; business research; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; communication media (presentation of goods on-), for retail purposes; comparison services (price-); consumers (commercial information and advice for-) [consumer advice shop]; economic forecasting; evaluation of standing timber; evaluation of standing timber; evaluation of wool; exhibitions (organization of-) for commercial or advertising purposes; forecasting (economic-); grading of wool; import export agencies; information agencies (commercial-); investigations (business-); marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; office machines and equipment rental; office machines and equipment rental; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; polling (opinion-); presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; psychological testing for the selection of personnel; public relations; publicity material rental; rental (office machines and equipment-); rental (publicity material-); rental of advertising space; rental of photocopying machines; rental of vending machines; research (business-); retail purposes (presentation of goods on communication media, for-); shop window dressing; sponsorship search; timber (evaluation of standing-); timber (evaluation of standing-); trade fairs (organization of-) for commercial or advertising purposes; valuation of standing timber; vending machines (rental of-); psychological testing for the selection of personnel.

The contested goods and services are the following:

Class 9: Encoded magnetic cards; Printed cards [magnetic]; Magnetic payment cards; Magnetic strip cards; Printed cash cards [magnetic].

Class 16: Advertisement boards of paper; Advertising pamphlets; Advertising posters; Cartoon prints; Comic strips; Comics; Coupons; Credit cards without magnetic coding; Debit cards without magnetic coding; Gift cards; Gift certificates; Gift vouchers; Magazines [periodicals]; Printed greeting cards with electronic information stored therein; Printed publications; Vouchers of value.

Class 35: Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Product demonstrations and product display services; Trade show and exhibition services; Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertising and marketing; Advertising and promotion services and related consulting; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of business web sites; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advertising particularly services for the promotion of goods; Advertising services for the promotion of e-commerce; Advertising services provided via the internet; Advertising services relating to the provision of business; Arranging of competitions for advertising purposes; Arranging of festivals for advertising purposes; Arranging of product launches; Business marketing services; Business promotion; Design of marketing surveys; Development of marketing strategies and concepts; Event marketing; Marketing the goods and services of others; On-line advertising on a computer network; Organisation of trade fairs for advertising purposes; Preparation of publicity leaflets; Promotion [advertising] of business; Promotion [advertising] of travel; Promotion services; Promotional marketing; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Rental of sales stands; Sales promotion for others; Sales promotions at point of purchase or sale, for others; Trade promotional services; Trade marketing [other than selling]; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Trade show and exhibition services; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers; Business intermediary and advisory services in the field of selling products and rendering services; Subscription to a television channel; Subscription to an information media package; Provision of an on-line marketplace for buyers and sellers of goods and services; Price comparison services.

As a preliminary remark, 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.

Contested goods in Class 9

All the contested Encoded magnetic cards; Printed cards [magnetic]; Magnetic payment cards; Magnetic strip cards; Printed cash cards [magnetic] are included in the broad category of the opponent’s magnetic data carriers. Consequently, these goods are identical.

Contested goods in Class 16

All the contested Advertisement boards of paper; Advertising pamphlets; Advertising posters; Cartoon prints; Comic strips; Comics; Coupons; Credit cards without magnetic coding; Debit cards without magnetic coding; Gift cards; Gift certificates; Gift vouchers; Magazines [periodicals]; Printed greeting cards with electronic information stored therein; Printed publications; Vouchers of value are all printed materials and as such they have some relevant points in common with the opponent’s electronic publications (downloadable) in Class 9. These goods may have the same purpose and coincide in their producer and relevant public. Furthermore they may be in competition. Consequently, these goods are similar.

Contested services in Class 35

The contested Advertising is identically mentioned in the opponent’s specification.

The contested Marketing and promotional consultancy; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Product demonstrations and product display services; Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertising and marketing; Advertising and promotion services and related consulting; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of business web sites; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advertising particularly services for the promotion of goods; Advertising services for the promotion of e-commerce; Advertising services provided via the internet; Advertising services relating to the provision of business; Arranging of product launches; Business marketing services; Business promotion; Event marketing; Marketing the goods and services of others; On-line advertising on a computer network; Preparation of publicity leaflets; Promotion [advertising] of business; Promotion [advertising] of travel; Promotion services; Promotional marketing; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Sales promotion for others; Sales promotions at point of purchase or sale, for others; Trade promotional services; Trade marketing [other than selling]; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers refer either to advertising/promotional actions or to marketing services consisting of a set of processes for identifying or creating, communicating, and delivering value to customers and for managing customer relationship in a way that benefits the organisation and stake-holders. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Examples of advertising services are rental of advertising time on communication media, telemarketing services, marketing, public relations and demonstration of goods, since they are all intended to promote other companies’ goods/services, albeit via different means. Therefore, all the above contested services are included in or overlap with the broad category of the opponent’s Advertising. Consequently, they are identical.

The contested Development of marketing strategies and concepts; Design of marketing surveys overlap with the opponent’s marketing research and marketing studies. Therefore, these services are identical.

The opponent’s public relations refer to the part of an organization's work that is concerned with obtaining the public's approval for what it does. In other words, they refer to the practice of managing the spread of information between an individual or an organization (such as a business, government agency, or a non-profit organization) and the public. Consequently, the contested Arranging of competitions for advertising purposes; Arranging of festivals for advertising purposes may easily be included in the broad category of the opponent’s public relations because these actions help to spread information among important number of people. These services are identical.

The contested Organisation of trade fairs for advertising purposes is included in the broad category of the opponent’s organization of trade fairs for commercial or advertising purposes. Therefore, these services are identical.

The contested Trade show and exhibition services overlap with the opponent’s organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes. Consequently, these services are identical.

The contested advisory and assistance services; Business intermediary and advisory services in the field of selling products and rendering services overlap with the opponent’s business management; advisory services relating to the aforesaid services, inter alia (advertising; business management; business administration; office functions; retail services and online retail services relating to etc.). Therefore, these services are identical.

The contested Price comparison services are identically mentioned in the opponent’s specification.

The contested Rental of sales stands is similar to the opponent’s rental of advertising space. These services have the same nature and they usually coincide in producer, relevant public and distribution channels.

The contested Provision of an on-line marketplace for buyers and sellers of goods and services is a specialised service essentially concerned with providing a platform allowing for the arrangement of transactions between buyers and sellers. These services share certain connections with the opponent’s information and advisory services in relation to the aforesaid services provided over a telecommunications network, inter alia, online retail services relating to…etc. since all these services are business facilitating services related to the operating of a business for profit and they help to match potential buyers and sellers. They may derive from the same undertakings and be aimed at the same customers, meaning also a match in distribution channels. Consequently, these services are similar.

The contested Subscription to a television channel; Subscription to an information media package refer to a business model where a customer must pay a subscription price to have access to a product or service. The model was pioneered by magazines and newspapers, but is now used by many businesses and websites. In other words these services refer to commercial trading and consumer information services that have the same purpose as the broad category of the opponent’s Advertising. These services consist in providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. Moreover, they target the same consumers. Therefore, they are similar to a low degree.

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 goods and services found to be identical or similar to various degrees are directed at both the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods/services, the frequency of their purchase and their price.

c) The signs

GURU TV	GURU CARD
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 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.

All the elements of the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both marks are word marks. The earlier mark is registered for ‘GURU TV’ and the contested sign applies for ‘GURU CARD’. Therefore, it is immaterial whether they are depicted in upper- or- lowercase letters. For the same reasons they do not have element/s which is/are more dominant than the others.

The term ‘GURU’ present in both signs will be understood as ‘a person who some people regard as an expert or leader, a religious and spiritual leader and teacher’ (consulted at https://www.collinsdictionary.com/dictionary/english/guru) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The second element ‘TV’ of the earlier mark will be associated with ‘television’. Bearing in mind the relevant advertising services in Class 35, which include advertisements in digital media, in particular, TV advertisements, it is considered that this element is non-distinctive for them. In relation to the remaining earlier goods and services this element is distinctive to an average degree.

The element ‘CARD’ of the contested sign will be associated with a piece of cardboard or plastic, or a small document, which shows information about you and which you carry with you, for example to prove your identity or, simply, with a piece of stiff paper or thin cardboard on which something is written or printed (consulted at https://www.collinsdictionary.com/dictionary/english/card). Taking into consideration all the contested goods in Classes 9 and 16 referring either to plastic cards or paper cards bearing printed or written information, the element ‘CARD’ is non-distinctive in relation to them. The element ‘CARD’ is normally distinctive in relation to the remaining contested services in Class 35.

Visually and aurally, the signs coincide in the distinctive element ‘GURU’ present at their beginning. This aspect is of a great important because consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ in their elements occupying the second position within the signs ‘TV’ and ‘CARD’ respectively and which have been considered to be non-distinctive for at least part of the goods and services. Consequently, they will have a limited impact on the relevant public when assessing the degree of similarity between the signs. Bearing this in mind the signs are considered visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning due to the main coincidence in the distinctive element GURU’. The elements occupying a second position within the signs ‘TV’ of the earlier mark and ‘CARD’ of the contested sign will be given less importance by the consumers as an indicator of commercial origin in relation to the relevant goods and services due to their limited distinctiveness, as explained above. Consequently, consumers will afford more trade mark significance to the first and distinctive element of the signs ‘GURU’ and this coincidence generates a high degree of conceptual similarity between 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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global Assessment’).

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 non-distinctive element for some of the relevant services, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the conflicting goods and services have been found identical and similar to various degrees.

The earlier mark enjoys an average degree of distinctiveness.

The signs are visually, aurally and conceptually similar to a high degree. As correctly argued by the opponent, the main similarity between the signs results from the fact that they contain identical term ‘GURU’ at their beginnings. The differences between the signs are limited to the additional elements ‘TV’ of the earlier mark and ‘CARD’ of the contested mark which, as mentioned above, have been found non-distinctive in relation to certain goods and services. Therefore, the coincidences in the first element of signs has a stronger impact for the public, as this is, usually, the part of the signs that first catches the attention of the consumers.

Additionally, the coinciding element in question, ‘GURU’, is normally distinctive for all the relevant goods and services. Therefore, the relevant English-speaking consumers might legitimately assume that the contested sign is a new version or brand-line, originating from the same undertaking responsible for the ‘GURU’ goods and services branded under the earlier mark.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that 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). 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).

Therefore, taking into account the aforementioned, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are clearly enough to outweigh the differences between the signs and they are likely to lead the relevant public to believe that the conflicting identical and similar to various degrees goods and services (including those which are only similar to a low degree) come from the same undertaking or economically linked undertakings, despite a possible higher level of attention for some goods and services.

Considering all the above, there is a likelihood of confusion, including a likelihood of association on the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 245 942. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registration No 10 245 942, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 10 245 942 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

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.