OPPOSITION No B 2 969 601

Teamwork Capital Management SA, 30 Rue de Saint-Jean, 1203, Genève, Switzerland (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340, Bourg-la-Reine, France (professional representative)

a g a i n s t

Teamwork Engineers, Seebadstr. 26 A, 13467 Berlin, Germany (applicant), represented by Rose & Partner LLP., Jungfernstieg 40, 20354 Hamburg, Germany (professional representative).

On 06/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 601 is upheld for all the contested services.

2. European Union trade mark application No 16 701 815 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 701 815 for the figurative mark . The opposition is based on international trade mark registration No 947 866 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 9: Equipment for data processing and telecommunications, computers and computer peripherals, computer programs and software, electronic apparatus and installations for recording, transmission, reproduction and processing, particularly digital, of sound or images as well as of computer data.

Class 16: Publications for computer programs and software, namely newspapers, magazines, books, manuals, catalogs and instructions for use.

Class 35: Business management, business administration, business management assistance, computer file management, professional consulting relating to business organization; business consulting for companies, namely professional consulting as regards information technology and office automation structures; provision of personnel; compilation of data into computer databases.

Class 38: Telecommunications, communications by computer terminals, information relating to telecommunications, computer-aided message and image transmission, electronic messaging, rental of apparatus and equipment for telecommunication and for message transmission, provision of access to databases; provision of access to databases, namely to magazines, books, manuals and catalogs on line; provision of access to magazines, books, manuals and catalogs on line.

Class 41: Training in the field of electronics, information technology and telecommunications, maintenance and development courses, teaching and practical training, publication of books, publication of texts; organization of sporting events, also as co-organizer or sponsor; training services, namely assistance services in relation to computer hardware and software, including services provided on line or via the Internet or extranets; electronic publication of magazines, books, manuals and catalogs on line.

Class 42: Research, writing, design, testing and development of computer programs and software, in particular for the field of commercial functions, accounting and production management control and management of articles, quality management and maintenance, distribution, personnel management and project management as well as all general office functions such as word processing, electronic mail and archiving; advisory services in connection with computer program and software writing, development, implementation and use; computer program and software implementation, programming, maintenance, rental, updating and subcontracting services; computer systems analysis; information and advisory services regarding computer hardware and software, including services provided on line or via the Internet or extranets; rental of computers, microcomputers and computer peripherals; development and design of computer systems in connection with the protection of computer creations; computer security services; installation, maintenance and repair of software for data networks; design of computer systems; computer programming; recovery of databases; development (design) of data banks.

Class 45: Legal services.

The contested services are the following:

Class 35: Personnel consultancy, personnel recruitment, human resources management, business consultancy and advisory services, business analysis services.

Class 41: Training of staff, organisation of workshops, conducting of courses, seminars and workshops, conducting of training courses, instruction for team-building purposes; personnel training.

Class 42: Design and development of computer hardware and software.

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.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 35

The contested personnel consultancy, personnel recruitment, human resources management, business analysis services, business consultancy and advisory services are included in the broad category of, or overlap with, the opponent’s business management. All of these services are intended to help companies manage their business by setting out their strategy and/or direction of the company. They involve activities associated with running a company, such as recruiting the most adequate personnel. Therefore, they are identical.

Contested services in Class 41

The contested training of staff, organisation of workshops, conducting of courses, seminars and workshops, conducting of training courses, instruction for team-building purposes, personnel training are included in the broad category of, or overlap with, the opponent’s teaching and practical training. All of these services are intended to train companies. Therefore, they are identical.

Contested services in Class 42

The contested design and development of computer hardware and software is similar to the opponent’s computer programming, as these services usually have the same producers, relevant public and distribution channels.

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 and similar 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 specialised nature or terms and conditions of the services purchased.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks are figurative. The earlier mark consists of a number of dark parallel lines of various lengths and thicknesses that form a triangle. Below this element is the word ‘TeamWork’ written in dark letters, all in lower case except the letters ‘T’ and ‘W’. The contested sign consists of the word ‘TEAMWORK’ in bold blue upper case letters and, underneath it, the smaller word ‘ENGINEERS’ in grey. On the left-hand side of the mark are four interconnected gears or cogs, two in blue, one in grey and one in black.

The common element ‘Teamwork’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘Teamwork’ will be understood as ‘the combined action of a group to achieve a goal’ in both the earlier mark and the contested sign by the relevant public. Teamwork is a key in the services in question. Therefore, the word ‘teamwork’ is weak.

The same applies to the word ‘ENGINEERS’ in the contested sign, which has no counterpart in the earlier mark. It is descriptive of the services involved, namely that the services are intended for engineers or provided by engineers. Therefore, the word ‘ENGINEERS’ is non-distinctive.

Despite the weak character of the word ‘teamwork’ in both signs and the non-distinctiveness of the element ‘engineers’ in the contested sign, the signs’ verbal elements will have a stronger impact on the consumer than the figurative components. 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). In the present case, neither of the figurative elements is fanciful or eye-catching in such a way as to play a dominant role in the signs. They both have a normal degree of distinctiveness in relation to the services in question.

Visually, the signs coincide in the word ‘teamwork’, although it is in different colours and typefaces in the signs. The signs differ in the word ‘ENGINEERS’ in the contested sign and in their graphical elements, described above. Although the additional element ‘ENGINEERS’ in the contested sign will not go unnoticed, its position in the sign and the fact that it is smaller than the element ‘TEAMWORK’ render it visually secondary.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛Team‑work’, present identically in both signs. The pronunciation differs in the syllables ‛EN‑GI‑NEERS’ of the contested mark, which have no counterparts in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As mentioned above, the coinciding element is weak. However, the contested sign’s additional element (‘ENGINEERS’) is non-distinctive.

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

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 weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually and conceptually similar to an average degree and are aurally highly similar. The services are partly identical and partly similar. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the relevant public’s degree of attention may vary from average to high.

Even though the coinciding element ‘teamwork’ may be perceived as weak by the public in relation to the services in question, the fact that a coinciding element has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the earlier mark or of the elements of which it is composed must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the light of all the foregoing considerations, and taking into account the principle of imperfect recollection, it must be held that, even taking into account the fact that the relevant consumers may display a higher than average degree of attention when purchasing the services, the small differences in the graphical depictions of the signs are not sufficient to rule out a likelihood of confusion in the sense that a substantial part of the relevant public could reasonably believe that the contested services found to be identical and similar to those of the opponent come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 international trade mark registration No 947 866 designating the European Union.

It follows from the above that the contested trade mark must be rejected for all the contested 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.

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

Vít MAHELKA

Raphaël MICHE

Mads Bjørn Georg JENSEN

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.