OPPOSITION No B 2 912 205

Gerd Garmaier, Breitbrunner Straße 9, 82266 Inning, Germany (opponent), represented by Gerstenberg Rechtsanwälte, Uhlandstrasse 2, 80336 München, Germany (professional representative)

a g a i n s t

Martin Moloney, 23 Hunters Lane, Hunterswood, Ballycullen, 24A668 Dublin, Ireland (applicant), represented by Martin Moloney, Suite 1C, Olympia House, 62 Dame Street, Dublin 2, Ireland (professional representative).

On 09/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002912205 is partially upheld, namely for the following contested services:

Class 41: Providing online courses of instruction, providing online electronic publications, providing online training seminars, provision of online tutorials, provision of online training, distance learning services provided online, providing online electronic publications, not downloadable, legal education services.

2. European Union trade mark application No 16 426 124 is rejected for all the above services. It may proceed for the remaining 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 some of the services of European Union trade mark application No 16 426 124 ‘Abacus Legal’, namely against all the services in Class 41. The opposition is based on, inter alia, German trade mark registration No 302 013 054 340 ‘ABACUS Nachhilfe’. The opponent invoked Article 8(1)(b) EUTMR.

In its last observations, the opponent withdrew international trade mark registration No 1 204 231 ‘ABACUS NACHHILFE’ (word mark) designating Austria and Benelux, covering services in Class 41 on which, inter alia, the opposition was based. Therefore, it will not be taken into account in the present proceedings.

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 German trade mark registration No 302 013 054 340 ‘ABACUS NACHHILFE’.

1. The services

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

Class 41: Extra-curricular teaching institutes; training centres; revision centres; providing of training; further training.

The contested services are the following:

Class 41: Providing online courses of instruction; online interactive entertainment; providing online electronic publications; providing online training seminars; provision of online tutorials; provision of online training; distance learning services provided online; providing online electronic publications, not downloadable; legal education services.

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.

In the notice of opposition, the opponent claimed that the opposition was based on all the services of earlier mark No 302 013 054 340. However, it also listed some of the services, namely extra-curricular teaching institutes; training centres; providing of training; further training (Class 41).

When the opponent indicates in the opposition form that the opposition is based on ‘all goods and services for which the earlier right is registered’ but then lists only ‘part’ of these goods and services (when compared with the registration certificate or relevant official extract attached to the opposition form), the Office will, to overcome the contradictory information contained in the notice of opposition, assume that the opposition is based on all the goods and services for which the earlier right is registered. Therefore, the opposition is based on all the services as they appear in the translation of the certificate, namely extra-curricular teaching institutes; training centres; revision centres; providing of training; further training.

The contested providing online courses of instruction; providing online training seminars; provision of online tutorials; provision of online training; distance learning services provided online are included in the broader category of the earlier providing of training services. Therefore, they are identical.

Similarly, the contested legal education services are identical to the opponent’s providing of training services, since they are in included in the opponent’s broader category of services.

The contested providing online electronic publications; providing online electronic publications, not downloadable are similar to the opponent’s providing of training because they coincide in distribution channels, end user and provider. Moreover, they are complementary.

The contested providing online electronic publications are similar to a low degree to the opponent’s providing of training because they usually coincide in distribution channels. Furthermore, they are complementary.

The contested online interactive entertainment covers services with the purpose of amusing and entertaining people. Therefore, they are dissimilar to all the opponent’s services because the purpose of these services is to provide training to people and develop their mental faculties. The services are neither complementary nor in competition. Furthermore, they are not usually provided by the same undertakings.

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 in the relevant field.

The degree of attention is considered to vary from average to high depending on the nature, price and sophistication of the services.

3. The signs

ABACUS Nachhilfe	Abacus Legal
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Word marks are protected as such. Differences in the use of lower or upper case letters are thus immaterial, even if lower case and upper case letters alternate.

The earlier mark is a word mark consisting of the two elements ‘ABACUS’ and ‘Nachhilfe’. The contested sign is also a word mark, consisting of the elements ‘Abacus’ and ‘Legal’.

The first word, ‘ABACUS’, which the signs have in common, will be perceived by a substantial part of the relevant public as meaningless. For this part of the public, since it has no relation to the relevant services, this element is distinctive to an average degree. However, it cannot be excluded that a part of the relevant public will perceive ‘ABACUS’ as meaning a calculating table made of balls sliding on wires. For this part of the public, this word could be perceived as allusive to training services. Therefore, it is distinctive to a low degree.

The second word, ‘Nachhilfe’, of the earlier mark is a German word meaning ‘coaching’ or ‘private lessons’. Given that the relevant services are training services, this word is descriptive and non-distinctive, as it refers to them directly.

The second word of the contested mark, ‘Legal’, is an English word that will be understood by the relevant public as meaning ‘allowed by law’. Therefore, this word is weak for the relevant services, as they could all concern training and publications related to legal matters and the law.

It follows from the above that the coinciding word, ‘ABACUS’, is the most distinctive element in both marks, as it is placed at the beginnings of both signs. This reinforces the similarities between the signs, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually and aurally, the signs coincide in the word ‘ABACUS’, which is the most distinctive element in both marks. They differ in their additional words, which have no counterparts, namely ‘Legal’ in the contested sign and ‘Nachhilfe’ in the earlier mark. However, given that these elements are either weak or non-distinctive for the relevant services and are at the ends of the signs, this difference has a limited impact.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public that will perceive the coinciding word, ‘ABACUS’, as meaningful, the signs are conceptually similar to an average degree to the extent that they share one concept, which is allusive with respect to the relevant services, and differ only in the words ‘Nachhilfe’ and ‘Legal’, which are non-distinctive and weak, respectively. As these elements cannot indicate commercial origin, the attention of the public will be attracted by the coinciding word, ‘ABACUS’.

For the part of the public that would not understand the meaning of ‘ABACUS’, the signs differ conceptually only in the word ‘Legal’. However, as it is distinctive to a low degree for the relevant services, the attention of the public will be attracted by the fanciful coinciding element, ‘ABACUS’. Therefore, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

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).

The services are partly identical and similar, and partly dissimilar. The degree of attention of the relevant public varies from average to high, and the earlier mark’s distinctiveness is normal.

From an overall perspective, the signs have one element, ‘ABACUS’, in common, which is the most distinctive element in both marks. They differ in their additional verbal elements. However, given that the differences between the signs are confined to non-distinctive and weak elements, they are insufficient to counteract their visual, aural and conceptual similarities and to allow the consumer to safely distinguish between the signs, even if the degree of attention of the public is high.

It follows that it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 German trade mark registration No 302 013 054 340.

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

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

German trade mark registration No 30 259 621 for the following services in Class 41: providing of training; further training; provision of training courses; organisation of seminars and language tuition; revision-centres;

• German trade mark registration No 2 065 999 for a narrower scope of services in Class 41: extra-curricular teaching institutes; training centres; revision centres.

Since these marks cover the same or a narrower scope of services in Class 41, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDAS

Julie, Marie-charlotte HAMEL

Carmen SÁNCHEZ PALOMARES

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.