OPPOSITION No B 2 910 605

Workspace Group Plc, Canterbury Court, Kennington Park, 1-3 Brixton Road, SW9 6DE, London, United Kingdom (opponent), represented by Beck Greener, Fulwood House 12M, Fulwood Place, WC1V 6HR, London, United Kingdom (professional representative)

a g a i n s t

Technopolis Oyj, Elektroniikkatie 8, 90590, Oulu, Finland (applicant), represented by Papula Oy, Mechelininkatu 1 a, 00180, Helsinki, Finland (professional representative).

On 31/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 605 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 443 111 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 443 111 for the word mark ‘UMA WORKSPACE’.

The opposition is based on, inter alia, European Union trade mark registration No 16 240 731 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) in relation to the above-mentioned earlier mark and Article 8(4) EUTMR in relation to a non-registered sign ‘WORKSPACE’ used in the course of trade of more than mere local significance in the United Kingdom.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 240 731.

1. The goods and services

The goods and services on which the opposition is based are, among others, the following:

Class 35: Advertising, marketing, promotion, public relations, endorsement and publicity services; business management; business administration; office functions; business introduction services; representation and agency services for artists, writers, actors, models, performers, photographers and others involved in the entertainment, fashion and media industries; dissemination of advertising, marketing, promotion, public relations, endorsement and publicity materials; compilation and transcription of data; compilation of advertisements for use as web pages on the Internet; compilation of directories; provision of space in publications, electronic publications, magazines and websites for advertising goods and services; advertising, marketing and promoting goods and services by distribution and transmission of advertisements including advertisements in the nature of audio, video, text messages and emails via wireless and mobile devices; distribution of samples; market research services; organization of fairs and trade shows for business, advertising and promotion purposes; shop-window dressing; auctioneering services; Provision of office services; business management; business development; business administration; office functions; providing start-up activities for businesses of others; business networking and business introduction services; new product development services; preparing business reports; computer business information storage; compilation of information on computer databases; searching services for computer databases; price comparison and price analysis services; data searching; database management services; market surveys; analysis of advertising response and market research; rental of office machines and equipment; secretarial services; photocopying, telephone answering, typing, word processing and secretarial services; clerical services; document reproduction and shredding services; personnel recruitment and placing services; business information, research, assistance and advice; accountancy services; data-processing services; sorting and editing of information in computer databases; searching for data in computer databases; personnel and human resource services; recruitment services; purchasing services; retail services, mail order services and wholesaling services relating to the following: bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated toilet preparations, preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, scalp, teeth and nails, soaps, personal cleansing preparations, shower gels, bath gels and bath preparations, perfumery, eau de parfum and toilet waters, deodorant preparations for personal use, antiperspirants, cosmetics, colour cosmetics, eye cosmetics, nail cosmetics, lip cosmetics, make up removers, cosmetic impregnated tissues, shampoos, hair conditioners, preparations for the hair, hair lotions, dentifrices, sun tanning preparations, sun-screening preparations, shaving preparations, after shave and pre shave lotions and oils, depilatory preparations, essential oils, oils for toilet purposes, pomanders, potpourris, perfumed drawer liners, fragranced sachets for drawers, room fragrance, incense, aromatic plant extracts, visual, office requisites, office furniture, photocopiers, office equipment, optical, scientific, measuring, signalling, checking, nautical, surveying, security, fire extinguishing, lifesaving, television, telephone, communications, radio and cinematographic apparatus and instruments, satellite broadcast receiving and decoding apparatus and instruments, protective clothing, footwear and headgear, communications, optical and photographic instruments and apparatus, telephones and mobile telephones, cameras, music players, audio and audio-visual, recording, downloading, and reproduction apparatus and instruments, mp3 players and recorders, computer hardware, firmware and software, arcade games, coin freed apparatus, electronic amusement apparatus adapted for use with television receivers, computer games and computer games software, electronic games, teaching and instructional apparatus and instruments, racks, stands and cases for storing, displaying and transporting audio and audiovisual recordings, non-printed publications, spectacles, sunglasses, spectacles cases, sunglasses cases, electronic, magnetic, and optical identity cards, credit cards, charge cards, debit cards and smart cards, photographic transparencies, precious metals and their alloys and goods in precious metals or their alloys or coated therewith, silverware, jewellery, precious stones, horological and chronometric instruments, costume jewellery, watches, key rings, cufflinks, lighters made of precious materials, musical instruments and electronic musical instruments, paper and cardboard, goods made from paper and cardboard, printed matter, bookbinding material, photographs, stationery, writing, drawing and marking instruments and cases therefor, mathematical and geometrical instruments and cases therefor, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites, instructional and teaching materials, wrapping and packaging materials, plastic materials for packaging, gift wrapping, paper and plastic bags, tissues, tissue paper, prints, posters, photographs, cards, greetings cards, gift tags, calendars, diaries, printers' type, printing blocks, publications, books, pamphlets, manuals, magazines, periodical publications, newspapers, newsletters, decalcomanias, pressure sensitive stickers, book covers, book marks, clothing, belts, collars and leads for animals, whips, harness and saddlery, umbrellas, parasols, walking sticks, animal skins, hides, luggage, bags, shopping bags, trunks, travelling bags, hand bags, shoulder bags, backpacks and rucksacks, bicycle bags, purses, wallets, key fobs and key cases, furniture, office furniture, household, toilet and kitchen utensils, containers and articles, cosmetics cases, combs and sponges, brushes, toothbrushes, brushmaking materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, kitchenware, glassware, tableware, crockery, ceramic goods, drinking vessels, porcelain and earthenware, vanity cases, ornaments, models and figurines, money boxes, textiles, fabrics, textile and fabric piece goods, wall coverings, furnishing and decorating textiles and fabrics, blinds, curtains and pelmets, bath linen, table linen, bed linen, household linen, clothing, footwear, headgear, clothing and textile article decorations, lace and embroidery, ribbons and braid, buttons, hooks, clasps and eyes, pins and needles, belt clasps, artificial fruit and flowers, slide fasteners, hair grips, badges, rosettes, patches, appliqués, buckles, boot and shoe laces, hat and headbands, games, toys and laythings, computer games, handheld and handheld computer games, games for playing on mobile communications devices, gymnastic, fitness and sporting articles and equipment, Christmas decorations, bags, cases and carriers for sporting, fitness and gymnastic equipment, beers, mineral and aerated waters, nonalcoholic drinks, energy drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic drinks, wines, spirits, liqueurs and cocktails and of parts and fittings related all the aforesaid goods; organisation and management of business incentive and loyalty schemes; administrative processing and organising of mail order services; arranging of business introductions; business research and survey services; business forecasting services; provision of business, clerical and secretarial services; news and current affairs clippings services; provision of information and advice to prospective purchasers of goods and services; answering and message handling services; operation of telephone call centres; managing remote monitoring centres; data management and electronic stocktaking services; providing web sites and web pages relating to any of the aforesaid; computerised data processing services; information, advice and assistance relating to all the aforesaid.

Class 36: Financial services; insurance services; money lending services; fund raising services; investment services; pension services; leasing of offices and premises; rental and leasing of commercial and industrial property and premises; financial services relating to property; insurance; real estate services; real estate agency; financial brokerage; financial portfolio management; mortgage services; property valuation services, management, brokerage, leasing and appraisal of real estate; property management; property portfolio management; property appraisal services; property valuations and surveys; rental and leasing of property; arranging leases for the rental of property; property investment; real estate brokerage; rent collection services; debt recovery and collection; estate management services; information, advice and assistance relating to the aforesaid.

Class 43: Providing temporary accommodation; hire of temporary office and commercial premises and accommodation; providing food and drink; bar, café, canteen and restaurant services; catering services; renting of catering and dining equipment, items and furniture; rental of office and commercial furniture; crèche, nursery and kindergarten services; pet housing services; information, advice and assistance relating to all the aforesaid.

The contested services are the following:

Class 35: Clerical services; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Photocopying services; Relocation services for businesses; Rental of photocopying machines; Rental of advertising space; Rental of vending machines; Office machines and equipment rental; Systemization of information into computer databases.

Class 36: Insurance underwriting; Finance services; Monetary affairs; Real estate affairs; Deposits of valuables; Rental of office space; Rental of apartments; Apartment house management; Valuation relating to the design of buildings; Valuation of buildings; Assessment and management of real estate; Real estate lending services; Real estate agency services; Rent collection; Rental of offices [real estate].

Class 43: Café services; Canteen services; Rental of meeting rooms; Event facilities and temporary office and meeting facilities; Hire of temporary office space.

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

Contested services in Class 35

Clerical services; Photocopying services are identically contained in both lists of services (including synonyms).

The contested Relocation services for businesses is included in the broad category of the opponent’s business administration (refers to organisation of employee transfer to other working places, help in their installation, looking for a house, etc.). Therefore, they are identical.

The contested Rental of photocopying machines is included in the broad category of, or overlap with, the opponent’s Photocopying. Therefore, they are identical.

The contested Rental of advertising space is included in the broad category of the opponent’s Advertising. Therefore, they are identical.

The contested Office machines and equipment rental; Systemization of information into computer databases are included in the broad category of, or overlap with, the opponent’s Clerical services. Therefore, they are identical.

The contested Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes is similar to the opponent’s Advertising as they may have the same purpose. They may coincide in producer and relevant public.

The contested Rental of vending machines is similar to at least a low degree to the opponent’s rental of office machines and equipment since they can be offered by the same entities and are directed to the same customers (various offices) who may need to lease and/or rent various types of office-related equipment.

Contested services in Class 36

The contested Insurance underwriting are included in the broad category of the opponent’s insurance services. Therefore, they are identical.

Finance services; Real estate affairs; Assessment and management of real estate; Real estate agency services; Rent collection are identically contained in both lists of services (including synonyms).

The contested Rental of office space; Rental of apartments; Apartment house management; Real estate lending services; Rental of offices [real estate] are included in the broad category of, or overlap with, the opponent’s real estate services. Therefore, they are identical.

The contested Monetary affairs include, as a broader category, or overlap with, the opponent’s money lending services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested Valuation relating to the design of buildings; Valuation of buildings are included in the broad category of the opponent’s property valuation services. Therefore, they are identical.

The contested Deposits of valuables are similar to the opponent’s Financial services as it is usual that deposits services are also provided by financial institutions like banks. The services at issue may coincide in distribution channels, providers and the

relevant public. Therefore, they are considered similar.

Contested services in Class 43

Café services; canteen services; hire of temporary office space are identically contained in both lists of services (including synonyms).

The contested rental of meeting rooms; event facilities and temporary office and meeting facilities are similar to the opponent’s providing temporary accommodation. Hotels usually have meetings rooms which can be rented to the hotel’s guests or external clients for meetings, conferences, etc. Therefore, these services can be provided by the same entities through the same distribution channels and to the same consumers.

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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

3. The signs

	UMA WORKSPACE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division will focus on the Polish-speaking part of the public because the signs are meaningless in Polish and the Opposition Division considers that this increases the likelihood of confusion between the signs.

The earlier mark is a figurative mark consisting of the verbal element ‘WORKSPACE’ written in bold black upper case script and two figurative, circular devices placed above the word. The contested sign is a word mark consisting of two verbal elements, ‘UMA WORKSPACE’.

As regards the figurative device of the earlier sign, it is considered that despite displaying some level of fancifulness, it will be perceived by the consumers essentially as a decorative element in the sign. Therefore, the figurative component of the earlier sign will have a limited impact on the public as an indicator of a commercial origin.

The verbal elements composing both signs at issue do not have any meanings for the relevant part of the public in question and, therefore, their distinctiveness is average. In consequence, the applicant’s allegation that the impact of the word ‘WORKSPACE’ is limited, because of its direct reference to some of the services at issue, has to be rejected. Also, the findings as regards the meaning of the word ‘workspace’ of the quoted by the applicant EUIPO’s opposition decision No B 2 113 168 cannot be taken into account, as in that decision the opposition was based on an earlier UK mark, which is not the case here.

The earlier mark has no elements that could be considered clearly more dominant (visually eye catching) than other elements.

Visually and aurally, the signs coincide in ‘WORKSPACE’, which constitutes the only verbal element of the earlier mark and the second word element of the contested sign. The coinciding element is distinctive for the relevant public. The signs differ in the first verbal element of the contested sign, ‘UMA’, and in the figurative, circular devices placed above the word in the earlier mark. As regards the different beginning of the contested sign, although the applicant reiterates the importance of the different word ‘UMA’ in the contested sign, the Opposition Division notes that it is a short additional element and its weight in the overall visual and aural perception of the contested sign cannot be overemphasised; in any event, the presence of this element does not attenuate the importance of the common nine-letter word element, which is clearly identifiable in the contested sign and constitutes its greater part.

Further, 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, as explained above, the figurative device of the earlier sign will be perceived by the public as a merely decorative element of the sign.

Even though the signs differ in their beginnings, where the consumers’ attention is focused, since the verbal element of the earlier mark is fully included in the contested sign as an independent element and it is preceded by only a three-letter word, the signs are considered visually and aurally similar to an average degree.

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

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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 services are partially identical and partially similar (to various degrees). The marks are visually and aurally similar to an average degree, while a conceptual comparison is not possible, thus, it does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attentiveness is considered to vary from average to high.

The signs at issue have been found to be similar on account of the fact that the only verbal element of the earlier mark is fully included in the contested sign as an independent element.

Although it is true, as claimed by the applicant, that the differences between the signs lie in the beginning of the marks, which is the part that first catches the consumer’s attention, it must be recalled that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by the marks.

The presence of three additional letters, ‘UMA’, at the beginning of the contested sign, is not sufficient to counteract the similarity deriving from the identical nine-letter word, ‘WORKSPACE’, which is the most important part in terms of the number of letters in the contested sign. In addition, in the present case, the word element ‘WORKSPACE’ of the earlier mark will be the part of the sign by which the consumer will primarily identify the services covered. As established above, and contrary to the applicant’s allegations, the word element of the earlier sign has stronger impact on the consumer than the figurative components. This is because the consumer will most readily refer to a sign by its verbal components rather than the figurative elements.

Overall, the differences between the signs are not sufficient to counteract the similarities arising from the identical distinctive word element ‘WORKSPACE’. It must be pointed out that it is common for the same mark to be configured in various ways according to the type of product or services which it designates. It is also common for a single manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various services from one another. In the present case, the consumer faced with the contested sign might be led to recognize it as a sub-brand of the earlier mark on account of the same relevant verbal element ‘WORKSPACE’.

Since the common word constitutes at the same time the only verbal element of the earlier sign, as a consequence, it is reasonable to assume that consumers would believe that the services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. This is in particular so as the average consumer will only rarely have the opportunity to compare the signs side-by-side but must instead rely on its imperfect memory. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 240 731. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 16 240 731 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(4) EUTMR.

COSTS

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

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

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

The Opposition Division

Gueorgui IVANOV

Marzena MACIAK

Monika CISZEWSKA

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.