OPPOSITION No B 2 585 142

Codere Newco S.A.U, Avenida de Bruselas, 26, 28100 Alcobendas (Madrid), Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Codete Przystalski Olechowski Śmiałek Spółka Jawna, Al. Juliusza Słowackiego 7/1, 31-159 Kraków, Poland (applicant), represented by Tomasz Krzywicki, Kastanienallee 94, 10435 Berlin, Germany (professional representative).

On 30/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 585 142 is upheld for all the contested services.

2. European Union trade mark application No 14 487 706 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 487 706. The opposition is based on European Union trade mark registration No 10 288 851. 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: 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.

Class 35: Advertising; Business management; Business administration; Office functions.

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

The contested services are the following:

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services.

Class 38: Telecommunication services.

Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.

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 services are also protected under the earlier mark. These services are therefore identical.

The contested marketing and promotional services belong to the general, broad category of the opponent’s advertising. These services are, thus, identical.

Business management services are also included in the specification of the earlier mark. The services are therefore identical.

The contested Business analysis, research and information services; Commercial trading and consumer information services are part of the broad category of the earlier Business management services which are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business. As a result, there exists identity between these services.

The contested Business assistance, administrative services are part of the broad category of the opponent’s Business administration and they are, thus, identical.

The contested services in Class 38

The contested Telecommunication services are similar to the earlier computers in Class 9 since one of the most fundamental conditions for using a computer today is the availability of a telecommunications network and service. Today computers are predominantly used for online activities such as browsing the internet, sending and receiving emails, making online purchases, etc. There exists, thus, complementarity between telecommunications and computers. Furthermore, customers purchasing a computer can often buy a telecommunications service such as a fixed-line internet access at the same outlet which acts partly as reseller of these latter services. To sum it up, there are important similarities between the contested telecommunications services and the earlier computers as regards their purpose, customers and distribution channels.

The contested services in Class 42

The contested Science and technology services are de facto identical with the earlier Scientific and technological services.

The contested Testing, authentication, quality control services usually form part of a research procedure since research logically involves testing, authentication and control of quality so that the results of that research can later be used and conclusions can be drawn. Accordingly, these services belong to the broad category of the earlier Industrial analysis and research services. These services are, thus, identical.

The contested IT services by their nature involve the earlier design and development of computer hardware and software as customers purchasing IT services very often order exactly these types of services, i.e. that a software or hardware be developed for their company. These services are, thus, identical, too.

The contested Design services are a general category and cover the earlier design relating thereto (i.e. to scientific and technological services). Since the Opposition Division cannot dissect ex officio the broader category of the contested services, there exists, thus, identity between these services.

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 contested services in Class 38 are directed at the public at large while those in Classes 35 and 42 are more specialised services directed at business customers with professional knowledge or expertise. The degree of attention is considered to vary from average to high depending on the actual services in Class 38 while the purchasing decision in relation to services in Classes 35 and 42 requires higher than average attention and is usually preceded by a lot of consideration and research given the large number of factors such as competition, price, availability, the service provider’s reputation, etc.

3. The signs

CODERE	CODETE
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).

Both marks are plain word marks which lack any meaning in the relevant territory’s languages. Therefore, they possess a normal degree of distinctiveness in relation to the goods and/or services. Since both marks consist of only one word, the issue of dominant elements is not relevant in the present case.

Visually, the signs are composed of six letters of which they coincide in their first four and in the last one: CODE_E. The only difference between the signs lies in their fifth letter being T and R in the contested sign and the earlier one, respectively. As consumers tend to focus on the initial parts of signs, they will perceive the identity in the signs’ first four letters and will give much less attention to the different, fifth, letters. Therefore, the signs must be considered to be highly similar from visual point of view.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their first four letters CODE_ as well as the ending E present identically in both signs. The pronunciation will be made somewhat different as a result of the signs’ fifth letter being T and R in the contested sign and the earlier one, respectively. However, this difference will have little impact on the intonation and rhythm of the signs, in particular since both signs consist of three syllables and six letters. The arguments related to the importance of the initial parts of signs explained above apply to the phonetic comparison too. As a consequence, the signs must be considered to be highly similar aurally.

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

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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 contested services were found to be either identical or similar to the earlier goods and services. The signs are highly similar phonetically and visually while they lack any meaning that could influence customer perception. The only difference in the signs, i.e. their fifth letter, bears little importance as to the impression they might produce on customers who would, in any event, focus on the signs’ initial, coinciding elements.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. The fact that potential customers would exercise higher than average attention at the time of purchase of some of the services concerned is considered to be incapable of counteracting the identity/similarity between the goods and services and the near-identity between the signs.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 288 851. It follows that the contested trade mark must be rejected for all the contested services.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Oana-Alina STURZA

Ferenc GAZDA

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.

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.