DECISION

of the Fifth Board of Appeal

of 10 June 2019

In case R 1609/2018-5

Modeverlag Lutterloh
Kemptener Strasse 84 88131 Lindau Germany	Applicant / Appellant

represented by Patentanwaltskanzlei Dr. Riebling, Rennerle 10, 88131 Lindau, Germany

v

The Paper & Office Equipment Spain ASS, S.A. Poessa
Polígono Industrial Bakiola Nave 1 48498 Arrankudiaga Spain	Opponent / Defendant

represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain

APPEAL relating to Opposition Proceedings No B 2 903 477 (European Union trade mark application No 16 432 023)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Govers (Rapporteur) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 6 March 2017, Modeverlag Lutterloh (‘the applicant’) sought to register the word mark

The Golden Rule

for the following list of goods and services:

Class 9 – Rulers [measuring instruments]; Measuring rulers; Measuring tapes;

Class 16 – Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples;

Class 35 – Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs;

Class 41 – Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

2. The application was published on 9 March 2017.

3. On 31 May 2017, The Paper & Office Equipment Spain ASS, S.A. Poessa (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods and services.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on European Union trade mark registration No 14 536 726, filed on 9 September 2015 and registered on 5 February 2016 for the following goods and services:

Class 16 – Writing or drawing books; School writing books; Files [office requisites]; Binders; Document files [stationery]; File covers; Paper folders; Index files; Printed matter; Bookbinding articles; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Paper; Paperboard;

Class 35 – Advertising; Supplying services for others (purchase of goods and services for other enterprise); Import, export and sole agencies; Management assistance for franchised businesses; Retailing in shops, via electronic means or via global computer networks of writing or drawing books, files, folders, paper, cardboard and office requisites.

6. By decision of 19 June 2018 (‘the contested decision’), the Opposition Division refused the trade mark applied for part of the contested goods and services, namely:

Class 16 – Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples;

Class 35 – Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs;

Class 41 – Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

• All the contested goods in Class 9 are dissimilar to the opponent’s goods in Class 16.

• They are also dissimilar to the opponent’s services in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The goods and services have different methods of use, are neither in competition nor complementary, do not target the same public and are not distributed or offered through the same channels.

• In Class 16, the contested rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers are included in a broad category of the opponent’s stationery. They are identical.

• The opponent’s broad category of ‘instructional and teaching material (except apparatus)’ are the tools used in educational lessons, which includes active learning and assessment. Any resource a teacher/instructor uses to help him teach his students is an instructional material. There are many types of instructional materials depending of the field of teaching. Sewing a wardrobe means feeling confident with sewing patterns. Consequently, ‘learning to sew clothes’ will necessarily encompass ‘instructional/teaching material’ such as contested ‘sewing patterns; Dressmaking patterns for drawing ; Patterns for dressmaking; Patterns for making clothes; French curves’. These goods cannot be clearly separated from a broad category of the opponent’s ‘instructional and teaching material (except apparatus)’. They are identical.

• The contested ‘advertising’ is identically listed in the opponent’s list of services in Class 35. ‘Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Promoting the goods and services of others through discount card programs’ serve to promote various business activities or reinforce the their owners’ position in the market through publicity. Therefore, they are all included in a broad category of the opponent’s ‘advertising’. These services are identical.

• The remaining ‘provision of space on web-sites for advertising goods and services’ also belongs to the opponent’s ‘advertising services’ since these services intend to promote other companies’ goods/services, albeit via different means. They are, therefore, identical.

• All the contested ‘publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet’ in Class 41 are similar to the opponent’s ‘school writing books’ in Class 16 as the goods and services are complementary and may be offered by the same producers/providers.

• The goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public will display an average degree of attention when encountering the relevant goods and services.

• The relevant territory is the European Union.

• The common term ‘GOLDEN’ will be understood by a part of the relevant public, in particular by the German or English-speaking part of the public as allusive of the exceptional quality of the goods and services in question. However, the Spanish- , Polish- and French-speaking public, will not understand this term; indeed, the equivalent terms are in Spanish ‘dorado’, in Polish ‘złoty’ and in French ‘d’or’.

• The contested decision focuses the comparison of the signs in the part of the public for which the element ‘GOLDEN’ is meaningless and therefore has a normal degree of distinctiveness, such as Spain, Poland and France.

• The contested goods and services are identical, similar and dissimilar to the opponent’s ones. The earlier mark is distinctive to an average degree.

• Visually and aurally the signs are similar to an average degree due to the coincidence in the distinctive element ‘Golden’ which constitutes the first element of the earlier mark and the first and normally distinctive element of the contested sign. The element ‘Golden’ is also the longest verbal element of the contested sign and will immediately catch the attention of the relevant public. The additional differentiating elements present in the signs refer either to the last and, therefore, less eye-catching element of the contested sign ‘Rule’ or to the element ‘The’ of the contested sign and the figurative elements of the earlier mark which, as mentioned above, will have less impact on the relevant Spanish-, Polish-, and French-speaking part of the public than the coincidence in the element ‘GOLDEN’. The relevant public will attribute more trade mark significance to this common element of the signs.

• Consumers may legitimately believe that the contested sign is a new extension/continuation or a new brand line of goods and services, provided under the opponent’s mark, as it is a normal market practice for brands to introduce their new versions via the introduction of new verbal or/and stylisation components, as in the present case the elements ‘The’ and ‘Rule’ to the contested sign, while preserving the same ‘house’ brand, ‘GOLDEN’.

• The differences between the signs are not sufficient to counteract the similarity resulting from their coinciding and outstanding element ‘GOLDEN’, and there is a likelihood of confusion, including a likelihood of association with the earlier trade mark, on the part of the Spanish-, Polish and French-speaking part of the public.

• The applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘GOLDEN’ translated into various languages. The applicant also refers to its own European Union trade mark registrations ‘El corte de oro’, ‘La coupe d’or’, ‘Il Taglio d’oro’, ‘Złoty krój’ and one German trade mark registration ‘Der Goldene Schnitt’.

• The existence of several trade marks is not particularly conclusive, as it does not necessarily reflect the situation in the market. It cannot be assumed that all such trade marks have been effectively used. The evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘GOLDEN’.

• The opponent also refers to the fact that its products are copyright protected by the ‘Library of Congress’ in Washington D.C. USA since many decades and submits an excerpt of the said copyright certificate. The applicant may protect its business activities in many ways, however, this cannot be a basis for the opposition. What is relevant in the present proceedings is that the opponent has an earlier right.

• The applicant argues that its business activity referring to a pattern making system called ‘The Golden Rule’ has a long tradition and exists since 1935 and filed evidence to demonstrate the above. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

• The opposition is partially well-founded. The contested mark must be rejected for the goods and services found to be identical or similar to the opponent’s goods and services.

7. On 16 August 2018, the applicant filed an appeal against the contested decision. The applicant requests the Board to revoke the contested decision, and order the opponent to bear the cost of the procedures. The statement of grounds of the appeal was received on 16 October 2018.

8. In its response received on 5 December 2018, the opponent requested that the appeal be dismissed and the applicant be ordered to bear the costs.

Submissions and arguments of the parties

9. The arguments raised by the applicant in the statement of grounds may be summarised as follows:

• The only goods that are identical are ‘Printed matter’. ‘Printed matter for instructional purposes’ and ‘Printed material in the nature of color samples’ are not identical to ‘Printed matter’ of the earlier mark. There is only a vague similarity. The contested application specifically claims goods that are suitable for a particular purpose, such as for teaching purposes and colour samples. The field of application of the goods of the contested application is therefore quite specific. In contrast, the earlier mark generally claims protection for printed matter.

• With respect to: ‘Rulers; Straight edges for drawing: Ungraduated rulers; Drawing’ there is only a vague similarity to ‘stationery’.

• There is no identity with regard to the goods: ‘Instructional and teaching material (except apparatus), Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking: Patterns for making clothes; French curves’ and the goods ‘Instructional and teaching material (except apparatus)’ of the earlier mark. The contested mark claims, in particular, protection for sewing patterns, for example, which are used in tailoring and dressmaking. The sewing patterns are paper templates (parts of the cut), used as patterns for cutting the material. The claimed goods of the contested mark are therefore sewing instructions.

• In Class 35, there is only a vague similarity between the contested services: ‘Online advertisements; Computerized business promotion; Advertising sen/ices relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing: Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet: Promoting the goods and services of others through discount card programs’ serve to promote various business activities or reinforce the their owners’ position in the market through publicity and the generic ‘advertising’ service of the earlier mark.

• In the contested ‘Provision of space on web-sites for advertising goods and services’ the consumer can specifically download advertising material, such as free sewing patterns. However, this service is not in any way identical to the early ‘advertising services’, because the latter refers to the performance of advertising actions, such as the distribution of flyers or the targeted mailing to customers.

• The contested ‘Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet’ in Class 41 show only a slight similarity to the goods ‘school writing books’ in Class 16. The term printed matter can also include sewing patterns, for example. Printed matter can also include posters, billboards, newspapers, tickets or magazines. However, these goods have only very little in common with the ‘School writing books’ of the earlier mark, and are sold via different channels of distribution.

• The goods and services are generally directed at the average consumer.

• The symbolized apple makes the earlier mark quite distinctive with respect to the contested mark, since the consumer immediately identifies the symbol and realizes the difference.

• The two marks differ due to their different word lengths (6 and 13 letters respectively).

• There is no aural similarity. The earlier mark begins with a capital ‘G’, which is the initial letter of the single word sign. The contested application begins with a ‘T’, which is the first letter of the first word sign of a total of three words. Furthermore, all letters of the earlier mark ‘GOLDEN’ are capitalized, while the contested mark ‘The Golden Rule’ uses both capital and lower-case letters. While the two marks have the identical word sign ‘Golden’, it is the first and only word in the earlier mark, and in the contested mark the word sign ‘Golden’ is in second place. The word ‘Golden’ takes the middle place between the two other word signs, ‘The’ and ‘Rule’, so it does not have a prominent position within the mark.

• The earlier mark only consists of the word sign ‘Golden’, which is short and has a relatively soft sound. The contested application consists of the three word signs ‘The Golden Rule’. The consumer will thus identify aurally, that the trade mark is long. Furthermore, the different beginning, ‘The’, has a relatively harsh sound.

• ‘The Golden Rule’ says that each part of a person's body is in proportion to each other. These are the same mathematical principles that Leonard Da Vinci used when he drew his many sketches and did his many paintings of the human body and perspective scenes.

• Therefore, there are substantial differences between the marks since, with the earlier mark, there is a very close association between the trade mark sign and an apple, while ‘The Golden Rule’ is a geometric ratio.

• The opposed marks only have few identical goods and services. The contested goods and services are directed at a different type of consumer and are sold via different distribution channels. This applies, for example, to teaching and instructional materials (earlier mark) and sewing patterns. The crucially factor here, however, is that the earlier marks differ considerably. There are a large number of visual differences (type of mark, word length, spelling, etc.), aural differences and, in particular, conceptual differences (apple/mathematical ratio). There is therefore no likelihood of confusion between the marks. The opposition is therefore not substantiated.

10. The arguments raised in response by the opponent may be summarised as follows:

• Firstly, the denomination of the earlier mark is ‘GOLDEN’ and is not related to ‘APPLES’ as claimed by the applicant.

• The marks share the dominant element ‘GOLDEN’ which will cause likelihood of confusion to the consumers, since the contested mark is phonetically almost identical to the earlier mark. The dominant element of both denominations share the same number of letters and syllables following the same order: The GOL-DEN Rule vs. GOL-DEN

• There will be numerous occasions in which it will be a clear likelihood of confusion between the denominations, as for example:

• In radio publicity;

• When asking a shop assistant in a good shop or when asking an address of a store to a passer-by.

• When the price or the offers of particular goods are announced in an establishment over loudspeakers.

• Visually, the conflicting marks are almost identical since the contested mark contains in its denomination as dominant element the whole denomination ‘GOLDEN’, which is the earlier right.

• The two conflicting marks are almost identical visually, phonetically and conceptually, and they cover almost the same goods and services. The consumer will establish an erroneous relation between both marks.

• The word GOLDEN is in a ‘distinct and autonomous position’ to the rest of the words of the contested mark.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Scope of the appeal

13. The applicant filed an appeal against the contested decision insofar as the Opposition Division upheld the opposition for the following goods:

Class 16 – Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples;

Class 35 – Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs;

Class 41 – Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

14. Furthermore, the opponent has not filed an appeal or a response seeking a decision annulling or altering the contested decision on a point not raised in the appeal.

15. The contested decision has therefore become final to the extent that the opposition was rejected by the Opposition Division for the following goods:

Class 9 – Rulers [measuring instruments]; Measuring rulers; Measuring tapes;

16. The Board must, therefore, evaluate whether the contested decision was correct to reject the trade mark application in relation to the contested goods listed in paragraph 13 above, pursuant to Article 8(1)(b) EUTMR with respect to the goods and services covered by the earlier EUTM No 14 536 726 .

Likelihood of confusion ‒ Article 8(1)(b) EUTMR

17. Article 8(1)(b) EUTMR states, in material part, that the trade mark applied for shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

18. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically‑linked undertakings, constitutes a likelihood of confusion on the part of the public, in the absence of which Article 8(1) EUTMR does not apply (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

19. It is settled case‑law that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as said consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22-23; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Relevant public / relevant territory

20. As a preliminary point, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products and services concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42).

21. Given that the earlier trade mark is an EU trade mark registration, the relevant public is the public in the European Union as a whole.

22. In this respect, the Board recalls that it follows from the unitary character of the European Union trade mark laid down in Article 1(2) EUTMR that an earlier European Union mark is protected in the same way in all Member States. Earlier European Union trade marks may, therefore, be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of consumers of part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57; 14/12/2006, T-81/03, T-82/03 and T-103/03, Venado, EU:T:2006:397, § 76). This means that finding a risk of confusion for only a part of the targeted relevant public of the EU is sufficient to reject the registration contested sign. In light of all the foregoing, the Opposition Division considered it appropriate to focus on the comparison of the signs from the perspective of the Spanish-, French- and Polish-speaking public in the EU. The Board will follow the same approach.

23. In the present case, the contested decision took the view that the goods and services considered target not only the general public but also business clients with specific professional experience or knowledge, whose level of attention will be average to high.

24. The Board endorses the contested decision’s finding in this respect, which has not been challenged by the parties.

Comparison of the goods and services

25. In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Additional factors include the purpose of the goods and services, whether or not they can be manufactured, sold or supplied by the same undertaking or by economically-linked undertakings, and also their distribution channels and sales outlets.

26. The goods and services applied for which are at issue in the present appeal are the following:

Class 16 – Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples;

Class 35 – Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs;

Class 41 – Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

27. The earlier goods and services are the following:

Class 16 – Writing or drawing books; School writing books; Files [office requisites]; Binders; Document files [stationery]; File covers; Paper folders; Index files; Printed matter; Bookbinding articles; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Paper; Paperboard;

Class 35 – Advertising; Supplying services for others (purchase of goods and services for other enterprise); Import, export and sole agencies; Management assistance for franchised businesses; Retailing in shops, via electronic means or via global computer networks of writing or drawing books, files, folders, paper, cardboard and office requisites.

Contested goods in Class 16

28. The contested ‘Printed matter’ is identically included in both lists. These goods are therefore identical.

29. The contested ‘Printed matter for instructional purposes; Printed material in the nature of colour samples’ are encompassed by the broader term ‘Printed matter’ of the opponent specification. Thus, contrary to what the applicant argues, these goods are considered identical.

30. The earlier ‘Instructional and teaching material (except apparatus)’ refer to any kind of materials and facilities that can be used to ease, encourage, improve and promote teaching and learning activities. They are whatever materials are used in the process of instruction that help the instructor in the teaching method. With that in mind, the contested ‘Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves’ include materials that can be used by the student when learning to sew patterns. These goods are therefore identical as the latter are included in the broader category ‘Instructional and teaching material (except apparatus)’.

31. The contested ‘Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers’ are used for measuring things and for drawing straight lines. They are office materials and equipment used for writing and are often included in stationery sets for school and homework, together with pencils, erasers, ballpoint pens, sharpeners, etc. The Board considers that the Opposition Division did not err when considering that the contested goods belong to the broad category of the earlier ‘stationery’, which are ‘materials or equipment used for writing’ (Collins Dictionary) and other office supplies and, therefore, these goods are identical.

Contested services in Class 35

32. The ‘advertising’ services are identically included in both specifications. They are therefore identical.

33. The contested ‘Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Promoting the goods and services of others through discount card programs’ consist of 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 enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used such as newspapers, fairs, electronic media and specifically the internet, etc. Thus, these services belong to the wider category of ‘advertising’. 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. These services are therefore identical.

34. As regards the ‘Promotion of fairs for trade purposes; Promotion of special events’, these services are similar to ‘advertising’, and not identical as stated in the contested decision. The former consist of the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. These services are normally provided by specialised companies in their specific field. As such, the services in question are to be considered similar to ‘advertising’ services since these could be offered to third parties in the form of the organisation, arranging and conducting of an exhibition or trade fair on their behalf (01/12/2014, R 557/2014-2, TRITON WATER (fig.) / TRITON COATINGS TRITON (fig.) et al., § 31).

35. Finally, as regards the contested ‘Provision of space on web-sites for advertising goods and services’ they are also identical to the earlier ‘Advertising’, as the contested decision correctly states. They have the same purpose, namely to promote other’s companies’ goods and services and to help them acquire a competitive advantage through publicity. They target the same public and have identical nature. They are all intended to promote other companies’ goods/services, albeit via different means.

Contested services in Class 41

36. The earlier ‘school writing books’ are teaching materials. When compared to the contested ‘publication of printed matter; publication of printed matter other than publicity texts; publication of printed matter in electronic form on the internet’, the Board considers that the Opposition Division correctly concluded that these goods and services are similar as they are generally issued by the same undertaking, and share the same public and distribution channels.

Comparison of the marks

37. With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

38. In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 30 upheld on appeal by order of 28/04/2004, C‑3/03 P, Matratzen, EU:C:2004:233, 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43, upheld on appeal by order 01/06/2006, C-324/05 P, Turkish Power, EU:C:2006:368).

39. The signs to be compared are:

    	The Golden Rule
    Earlier mark	Contested sign

40. It should be pointed out, in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30, and 18/10/2007, T-28/05, Omega 3, EU:T:2007:312, § 54).

41. As stated above, the Board will, as the Opposition Division did, focus on the perception of the Spanish-, French- and Polish-speaking part of the relevant public.

42. The earlier mark is a figurative mark composed of the verbal element ‘GOLDEN’ written in black standard upper case letters, where the letter ‘G’ is slightly bigger, and a figurative element representing a black and white apple. The sign has no element which could be considered visually more eye-catching.

43. The contested sign is a word mark that consists of the expression ‘The Golden rule’. In view of the fact that it is a word mark, no visually dominant element can be ascertained.

44. For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (03/09/2010, T-472/08, 61 a nossa alegria, EU:T:2010:347, § 47, and the case-law cited therein).

45. In respect of the understanding of the common element ‘GOLDEN’ by the non-English-speaking public, namely the Spanish-, French- and Polish-speaking part of the relevant public, first, it is true that elementary English is assumed to be widely understood throughout the European Union (26/09/2012, T-301/09, ‘Citigate’, § 41).

46. On the other hand, it may not be expected that the average consumer has a particular knowledge of a foreign language, although this is a flexible rule (see, by analogy, 03/09/2009, C-395/38 P, EU:C:2009:334, § 51) and the knowledge of foreign terms by the relevant public should be assessed on a case by case basis, being hereby particularly pertinent as to whether the words in question in the foreign language are very close to the equivalent words in the official language of the relevant territory.

47. It cannot be assumed that English is understood by all the average consumers in the European Union, and especially not for average consumers in whose languages the translation of ‘golden’ is not an equivalent word, such as, for instance, in Spanish (‘dorado’), French (‘doré’), or in Polish (‘złoty’). For such consumers, the term ‘golden’ has a normal level of distinctiveness in respect of the relevant goods and services, as the contested decision correctly held (16/09/2013, T‑437/11, Golden balls, EU:T:2013:441, § 44).

48. However, for the part of the relevant public that will understand English, the element ‘GOLDEN’ will be allusive or laudatory in respect of the relevant goods and services, as it may allude to their superior quality.

49. The verbal element ‘THE’, present in the contested sign, is the only definite article used in the English language. It is a grammatical tool which serves to introduce the element(s) it precedes, in the present case ‘Golden Rule’. Therefore, its impact in the assessment of the likelihood of confusion is limited. It is considered to be less distinctive than the remaining terms of the earlier mark, namely ‘Golden Rule’.

50. Finally, as regards the last element of the contested sign, ‘Rule’, it is considered to be meaningless for the relevant public and, therefore, its distinctiveness is deemed to be average in respect of the relevant goods and services.

51. As regards the figurative element of the earlier mark, namely the apple, it should be borne in mind that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (31/01/2012, T-205/10, La victoria de Mexico, EU:T:2012:36, § 38 and the case-law cited therein; 15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 45).

52. Visually, the marks are similar insofar as they include the element ‘GOLDEN’, which constitutes the verbal element of the earlier mark in its entirety, and is fully included in the contested sign. The marks differ in the additional verbal elements ‘Rule’ and ‘The’ of the contested sign. However, the latter is a descriptive term and the public will not focus on it. The marks also differ in the figurative element of the earlier mark, which has no counterpart in the contested sign. However, for the reasons set above, this difference is not enough to counteract the overall visual impression of similarity created by the common element. Although the examination of the visual similarities between the signs has to take into account all the elements in the earlier trade mark, the figurative elements must be viewed as details that are insufficient to compensate for an overall assessment of visual similarity (30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 46‑47). Consequently, although the figurative components of the marks are not insignificant, the consumer is likely to focus primarily on their denominative elements as a point of reference.

53. Furthermore, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar, pursuant to extensive settled case-law, including the following judgments: 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28 and the case-law cited therein; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 47‑50; 04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 40; 18/02/2004, T‑10/03,Conforflex, EU:T:2004:46, § 59 et seq.; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 46; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 54-57; 04/05/2005, T-359/02, Star TV, EU:T:2005:156; 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 49 et seq.; 25/05/2005, T-352/02, PC Works, EU:T:2005:176, § 34 et seq.; 25/05/2005, T-288/03, Teletech Global Ventures, EU:T:2005:177, § 86 et seq.; 22/03/2007, T-322/05, Terranus, EU:T:2007:94, § 35 et seq.; 08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66 et seq.; 08/09/2010,T-369/09, Porto Alegre, EU:T:2010:362, § 26 et seq.; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T-356/10, Victory Red, EU:T:2011:543, § 26 et seq.; 23/05/2007, T-342/05, Cor, EU:T:2007:152; 10/11/2011, T-313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011; T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55 et seq. The Board cannot simply ignore such well-established case-law.

54. Given these circumstances, although the contested sign contains added words and the earlier mark depicts additional figurative elements, these are not sufficient to attenuate the visual similarity based on the element ‘GOLDEN’. The Board takes the view that the fact that both marks include the term ‘GOLDEN’, this being the sole verbal element of the earlier mark which is fully included in the contested sign, is sufficient to render the signs visually similar to an average degree, as the contested decision correctly found.

55. Aurally, as indicated by the Opposition Division, regardless of the different pronunciation rules in the various parts of the relevant territory, the pronunciation of the trade marks is the same in terms of the sound of the syllables /gol/den/, which are present in an identical form in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the syllables /the/rule/ of the contested sign, which have no counterpart in the earlier mark. Nevertheless, although the trade marks will be uttered with a different number of syllables (/gol/den/, in the case of the earlier trade mark, as opposed to /the/gol/den/rule/, in the contested trade mark), as established by case-law on a number of occasions, aural similarity exists if the earlier trade mark is included in its entirety in the trade mark applied for (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, §72; 26/01/2006, T‑317/03, Variant, EU:T:2006:27, § 47). Consequently, the Board takes the view that the aural identity that exists between the earlier mark and the beginning of the contested sign predominates over the aural difference deriving from the presence, in the contested sign, of the word component ‘The’ and ‘Rule’. Thus, the Board considers the signs in question to be phonetically similar at least to an average degree, despite their differences in length.

56. Conceptually, both signs contain the word element ‘GOLDEN’, which has no meaning for the relevant public. The differing element ‘Rule’ is also meaningless and the element ‘The’ has a lesser impact in the conceptual comparison of the signs. As regards the figurative element representing an apple, it will be perceived as such by the relevant public. The signs are therefore conceptually dissimilar.

Overall assessment of the likelihood of confusion

57. The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth Recital 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 and 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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

59. The average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (see to this effect 11/11/1997, Sabèl EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

60. For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

61. The similarity between the signs stems from the fact that the element ‘GOLDEN’, which is the sole verbal element of the earlier mark, is entirely incorporated in the contested sign, in which it occupies, furthermore, a position which is easy to see and memorize, since it appears after the element ‘The’, which has a very limited impact in the global assessment of the likelihood of confusion.

62. The conflicting goods and services have been found identical and similar. The marks in question have been found similar visually and aurally, given that the trade mark applied for completely reproduces the entirety of the verbal element of the earlier trade mark, the similarity of which is not undermined by the additional elements, and conceptually dissimilar, except for the part of the relevant public that understands English, for which the signs are also conceptually similar.

63. Keeping in mind that consumers usually tend to focus on similarities rather than on differences, the existing difference in the verbal elements ‘The’ and ‘Rule’ positioned at the beginning and at the end of the contested sign, as well as the differences that originate from the earlier mark’s figurative element, are not enough to overcome the similar overall impressions created by the signs.

64. Therefore, a consumer who is aware of the earlier mark, when confronted with the contested sign, will naturally tend to believe that the trade marks correspond to an identical commercial origin, or will at least establish a link between them.

65. The Board takes the view that, since the relevant public does not have the chance to make a direct comparison between the trade marks but must place their trust in the imperfect picture of them that they have kept in mind, the fact that the marks are not the same in terms of the word elements as a whole and as regards the figurative elements is not sufficient to prevent the relevant public from confusing the two marks, which are visually and aurally similar, in relation to identical and similar goods and services.

66. The Board also notes that it is common for undertakings active on the market to use sub-brands, that is to say signs that derive from a principal mark and have a coinciding element, in order to distinguish the scope of one product from another. It is, therefore, conceivable that the target public, even professionals, with a high degree of attention, may still regard the similar or identical goods and services designated by the conflicting signs as another product or service line that comes from the same undertaking or economically-linked undertakings.

67. Indeed, although the public may perceive the differences between the signs, it cannot be ruled out that consumers may legitimately believe that the contested mark, ‘The Golden Rule’, is a new brand line or a recent development under the opponent’s mark , and that they will consider the signs to be for different lines of goods and services from the same undertaking or, at least, from linked undertakings, despite their higher than average level of attention.

68. Bearing all the relevant factors in mind, the similarities between the signs are, taken overall, sufficient to confirm that there will be a likelihood of confusion for the relevant public, despite the fact that the level of attention of the relevant public may be higher than average.

69. Thus, the appeal is dismissed and the contested decision is confirmed.

Costs

70. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the appeal proceedings.

71. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

72. As to the opposition proceedings, the Opposition Division ordered each party to bear its own costs. This decision remains unaffected. The total amount for both proceedings is therefore EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs incurred by the opponent in the appeal proceedings amounting to EUR 550.

Signed G. Humphreys

Signed C. Govers

Signed V. Melgar

Registrar: Signed p.o. P. Nafz