OPPOSITION No B 2 876 426

Codis Granada, S.L., Julio Verne, 4, 18003, Granada, Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010, Madrid, Spain(professional representative)

a g a i n s t

Jan Jaspersen, Wangenheimstraße 9, 30625, Hannover, Germany (applicant), and Patrik Metzmacher, Schröderstraße 8, 10115 Berlin, Germany, (applicant), represented by Hübsch & Weil Patent- und Rechtsanwaltskanzlei Patentanwalt Dirk Hübsch Rechtsanwalt Christian Weil Partnerschaft Mbb, Oststr. 9-11, 50996, Köln, Germany (professional representative).

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

DECISION:

1. Opposition No B 2 876 426 is partially upheld, namely for the following contested goods and services:

Class 9: Recorded content; educational apparatus and simulators.

Class 41: Education; Providing of training; cultural activities; Schools for adults and for children; Services of schools [education]; Publishing; Education, Rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class.

Class 42: Arranging and conducting of seminars and/or training.

2. European Union trade mark application No 16 025 009 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 025 009 , namely against all the goods in Class 9 and all the services in Classes 35, 38, 41 and 42. The opposition is based on Spanish trade mark registration No 1 181 246(X) ’CODIS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 services on which the opposition is based are the following:

Class 41: Center for distance learning of competitive examination.

The contested goods and services are the following:

Class 9: Recorded content; Information technology and audiovisual equipment; Magnets, magnetizers and demagnetizers; Devices for treatment using electricity; Apparatus, instruments and cables for electricity; Optical devices, enhancers and correctors; Safety, security, protection and signalling devices; Measuring, detecting and monitoring instruments, indicators and controllers; Scientific research and laboratory apparatus, educational apparatus and simulators; Parts and fittings for all the aforesaid goods, included in this class; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, data processing equipment and computers.

Class 35: Franchising, namely assistance in the management of industrial or commercial enterprises; Advisory services (Business -) relating to the operation of franchises, Advisory services relating to publicity for franchisees; Business advisory services relating to the establishment and operation of franchises; Advertising, marketing and promotional services; Commercial services and consumer information, namely auctioneering, rental of automatic vending machines, brokerage, organising business contacts, collective buying, commercial evaluation, preparation of competitions, agency business, import and export services, negotiation and brokerage, ordering, price comparison, procurement services, for others, subscription services; Business assistance, management and administrative services; Business analysis, research and information services; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 38: Telecommunication services; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Schools for adults and for children; Services of schools [education]; Publishing and reporting; Education, entertainment and sports; Translation and interpretation; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 42: IT services, namely development, programming and implementation of software, development of computer hardware, hosting, software as a service (SaaS) and rental of software, rental of computer hardware and installations, IT consultancy and information, IT security, protection and repair, data duplication and conversion, data coding; Computer analysis and diagnostics, research and development, and implementation of computers and computer systems, computer project management, data mining, digital watermarking, computer services, technological services in relation to computers, computer networking, updating of memory banks in computer systems, data migration, updating of websites, for others, monitoring of computer systems by remote access; Science and technology services; Testing, authentication and quality control; Design services; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Programming of data processing equipment; Computer programming; Programming of web pages; Programming of software for website development; Design, development and programming of computer software; Arranging and conducting of seminars and/or contracts and/or training

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 ‘including’, used in the applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested recorded content is similar to the opponent’s center for distance learning of competitive examination. The contested goods can be provided by the same provider of the opponent’s services. Indeed, recorded content includes educational or training materials and it is usual on the market that the providers of such services often also supply the accompanying educational tools such as the contested goods used as learning supports. They are complementary and target the same public, furthermore they can share the same channels of distribution.

The contested educational apparatus and simulators are similar to a low degree to the opponent’s center for distance learning of competitive examination. They coincide in their purpose, teaching, and they target the same public. Educational apparatus is a broad term that includes equipment used to complement training services such as those provided by the opponent, particularly in the context of distance learning, thus they are complementary.

The remaining contested goods in this Class, information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; devices for treatment using electricity; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, parts and fittings for all the aforesaid goods, included in this class; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, data processing equipment and computers, are dissimilar to the opponent’s services in Class 41. The contested goods are equipment and apparatus related to information technology, electricity and research, the fact that they can be used to provide some of the opponent distance learning services does not make them similar, given the difference in their purpose, distribution channels, providers and end users. It should be recalled that magnetic data carriers as such do not have content and are blank. Indeed, there are no relevant points of contact and neither has the opponent provided any arguments or evidence that would change this finding.

Contested services in Class 35

The contested services in this class are dissimilar to the opponent’s center for distance learning of competitive examination. The contested services are related to advertising, business administration and management, and the opponent’s services are distance learning. The purpose (education), relevant public and providers of all the services of the earlier mark are different from those of the contested services. Therefore, they are considered dissimilar.

Contested services in Class 38

The contested telecommunication services; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class are dissimilar to the opponent’s services in Class 41. The contested services in this class are in the field of telecommunications and the opponent services cover education related services. The fact that the opponent’s services might involve some of the contested services is not enough to find similarity between them. Accordingly, these services under comparison are dissimilar, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are not directed at the same consumers, are neither complementary nor in competition and are not likely to come from the same kind of undertakings.

Contested services in Class 41

The contested providing of training; schools for adults and for children; services of schools [education]; consultancy and information in relation to the aforesaid services included in this class overlap with the opponent’s center for distance learning of competitive examination. Therefore, they are identical.

The contested education (listed two times in the applicant’s specification) includes, as a broader category the opponent’s center for distance learning of competitive examination. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services. Given that the contested consultancy and information in relation to education is a broad term it also overlaps with these services leading to the same conclusion.

The rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class are similar to the opponent’s services since it is common for educational providers to also rent out specific pieces of equipment and supply information to students. Therefore the contested services can be provided by the same undertakings that provide distance learning, and can target the same relevant public. Furthermore they can share the same channels of distribution.

The contested publishing is similar to a low degree to the opponent’s center for distance learning of competitive examination as, in spite of having a different purpose, they are complementary and can be offered through the same distribution channels. Given that the contested consultancy and information in relation to publishing is inherent to the same contested services the findings and conclusion are equally applicable here.

The contested cultural activities and consultancy and information in relation to cultural activities are similar to a low degree to the opponent’s center for distance learning of competitive examination. The contested services can be provided by the same undertakings that provide distance learning and can target the same relevant public.

The contested entertainment; sporting activities; reporting; entertainment and sports; translation and interpretation; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class, comprise a broad range of services including services relating to activities involving physical exercise, and/or intended to amuse or inform people, whereas the opponent’s services in this Class, center for distance learning of competitive examination are offered to develop the intellectual faculties of persons. These services belong to different areas of activity, and have different purposes. Moreover, these services are not complementary or in competition. Therefore, they are considered dissimilar to the opponent’s services in Class 41.

Contested services in Class 42

The contested arranging and conducting of seminars and/or training and the opponent’s center for distance learning of competitive examination have the same nature and purpose and target the same public as the opponent’s distance learning services. They can be also rendered in combination and are, therefore, considered similar.

The contested IT services, namely development, programming and implementation of software, development of computer hardware, hosting, software as a service (SaaS) and rental of software, rental of computer hardware and installations, IT consultancy and information, IT security, protection and repair, data duplication and conversion, data coding; Computer analysis and diagnostics, research and development, and implementation of computers and computer systems, computer project management, data mining, digital watermarking, computer services, technological services in relation to computers, computer networking, updating of memory banks in computer systems, data migration, updating of websites, for others, monitoring of computer systems by remote access; Science and technology services; Testing, authentication and quality control; Design services; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Programming of data processing equipment; Computer programming; Programming of web pages; Programming of software for website development; Design, development and programming of computer software; encompass activities related to creation of computer software and consulting, research, design and rental in the computer field. These are usually provided by specialists/enterprises profiled in computer technology, which are not the producer/provider of the opponent’s goods and services The contested services do not coincide with the opponent’s services in Class 41, in nature, purpose or method of use and are neither complementary, nor in competition. It follows that these are dissimilar.

The contested science and technology services; testing, authentication and quality control; design services; industrial analysis and research services; arranging and conducting of contracts are clearly aimed at different end users to the opponent’s earlier center for distance learning of competitive examination which relate to education services. They will be provided by different providers via different trade channels. The contested services do not coincide with the opponent’s services in Class 41, in nature, purpose or method of use and are neither complementary, nor in competition. There are no relevant points of contact and nor has the opponent adduced any evidence or arguments as to why these services could be similar.They are dissimilar to all of the opponent’s 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 goods and services found to be identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high. Some of the services may be expensive (educational for example) and, in addition, people generally pay considerable attention to courses that they wish to undertake.

3. The signs

CODIS
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 word mark, ‘CODIS’ and it has no meaning for the relevant public. It is distinctive in relation to the protected services.

The contested mark is a figurative sign composed of the verbal element ‘CODY’ in a white bold script, inside a green hexagonal background, and besides it are the words in bold letters ‘AKADEMIE FÜR DIGITALE KOMPETENZEN’. The word ‘CODY’ has no meaning for the relevant public and it is distinctive in relation to the goods and services at issue. The German words ‘AKADEMIE’ and ‘DIGITALE COMPETENZEN’ will be understood as ‘Academy’ and ‘Digital competences’ by the relevant public due to their high similarity to the equivalent words in Spanish, namely ‘Academia’ and ‘Competencia Digital’. Bearing in mind that part of the services are teaching/educational services and IT related services and goods, these words are non-distinctive for the identical and similar goods in Class 9 (e.g. recorded content ) and services in Classes 41 (e.g. providing of training) and 42 (e.g. arranging and conducting of seminars and/or training). The word `FÜR’ has no meaning for the relevant public and is, therefore, distinctive. Due to its size and position the figurative element with the word ‘CODY’ is the most dominant element in the contested sign.

Visually, the signs coincide in the first three letters of their distinctive verbal element ‘COD’ (three letters out of five in the earlier mark and out of four in the contested sign). They differ in the final ‘IS’ of the earlier mark and in the final ‘Y’, the white bold script and figurative green background of the contested sign and in the additional words in the contested sign, ‘AKADEMIE FÜR DIGITALE COMPETENZE’, which are non-distinctive, (except the word ‘FÜR’), as explained above. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T-312/03 Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 0233/2011-4, Best Tone, § 24; and 13/12/2011, R 0053/2011-5, Jumbo, § 59). As explained above the figurative hexagon with the word ‘CODY’ is the dominant element in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CODI’, present identically in both signs, as the letters ‘I’ and ‘Y’ in this word are pronounced identically in Spanish. The pronunciation differs in the sound of the letter ‛S’ of the earlier mark, which has no counterpart in the contested sign and in the sound of the letters in the words ‘AKADEMIE FÜR DIGITALE COMPETENZE’, which are non-distinctive, (except the word ‘FÜR’), as explained above, in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meanings of the non-distinctive elements in the contested sign, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar

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.

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, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The goods are partly similar to various degrees and partly dissimilar and the services are partly identical, partly similar to various degrees and partly dissimilar.

The signs are visually similar to an average degree and aurally similar to a high degree and they are not conceptually similar. The differences between the earlier mark and the contested sign’s dominant element, visually the final two letters and the stylized white typescript and green background of the contested sign, are not sufficient to counteract the significant similarities between them. The additional verbal elements are non-distinctive, except for the word ‘FÜR’, which, due to its size and position, is secondary. Account must be 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. Inter alia, in the decision R0049/2000-3,’LUCIANO vs LUCIA’, the signs have more differences (conceptual, length of the signs), than the case at issue. In the decision R1570/2006-2, ‘Alam’ vs ‘ALANA’ the aural and visual similarity was low, whereas in the case at issue the aural and visual similarity is high. Most of the remaining decisions referred by the applicant are less relevant as the signs in those cases are composed of two words, which make the cases less comparable. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, bearing in mind that the figurative element with the word ‘Cody’ is the dominant element in the contested sign, the non-distinctive character of the additional verbal elements, and that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public, even with a high degree of attention, and therefore the opposition is partly well founded on the basis of the opponent’s European Union Spanish trade mark registration No 1 181 246(X).

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

The rest of the contested goods and 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 goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra KASPERIŪNAITÉ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Gueorgui IVANOV

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.