OPPOSITION No B 2 990 201

WeWork Companies Inc., 115 West 18th Street, 10011 New York, United States of America (opponent), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, WC2B 6AH London, United Kingdom (professional representative)

a g a i n s t

Yoo Holdings Limited, 2 Bentinck Street, W1U 2FA London, United Kingdom (applicant), represented by Chapman IP, Kings Park House, 22 Kings Park Road, SO15 2AT Southampton, United Kingdom (professional representative).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 990 201 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 885 717 for the word mark ‘YOO@WORK’, namely against all the services in Classes 35 and 36. The opposition is based on European Union trade mark registration No 12 076 824 for the word mark ‘WEWORK’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 services

The services on which the opposition is based are, inter alia, the following:

Class 35: Providing co-working facilities equipped with private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; business information services; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others; providing office support services; online business networking services; administering group purchasing programs and other discount programs, namely negotiating with providers of insurance, banking, credit card processing, travel and transportation services, to enable participant members of a business community to obtain discounts on the purchase of those services from others; computer-assisted business information and research services; assistance and advice regarding business location; arranging and conducting special events and camps for business purposes; advertising; business management; business administration; office functions.

Class 36: Leasing of office space; leasing of real estate; rental of office space; insurance; financial affairs; monetary affairs; real estate affairs.

The contested services are the following:

Class 35: Office functions; administrative, clerical and secretarial services; management of office space; business management services relating to offices, property, commercial property, real estate, buildings.

Class 36: Rental of office space; leasing of office space; leasing of real estate; real estate services; rental of co-working facilities and work space equipped with private offices, office equipment, mailroom, printing centre, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities.

Contested services in Class 35

Office functions are identically contained in both lists of services (including synonyms).

The contested administrative, clerical and secretarial services are included in the broad category of, or overlap with, the opponent’s providing office support services. Therefore, they are identical.

The contested management of office space; business management services relating to offices, property, commercial property, real estate, buildings are included in the broad category of, or overlap with, the opponent´s business management. Therefore, they are identical.

Contested services in Class 36

The contested rental of office space; leasing of office space; leasing of real estate; real estate services; rental of co-working facilities and work space equipped with private offices, office equipment, mailroom, printing centre, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities are included in the broad category of the opponent´s real estate affairs. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

Bearing in mind the specialised nature of the relevant services and the fact that they may have important consequences for their users, consumers’ level of attention would be quite high when choosing them.

Therefore, the level of attention of the public will be higher than average for all the services at issue.

3. The signs

WEWORK	YOO@WORK
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Regarding the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The element ‘WORK’ is an English word meaning ‘employment; to be engaged in physical or mental activity in order to achieve a result; do work’ (https://en.oxforddictionaries.com) and will be understood as such by the English-speaking part of the public, who will therefore separate the earlier mark into two verbal elements, ‘WE’ and ‘WORK’. Given the services covered by the signs at issue, all of which can have some relation to office functions or office space, and therefore to assisting in the activity of working, the element ‘WORK’ has a low level of distinctiveness for this part of the public. The element ‘WE’, a personal pronoun qualifying the verb it precedes, will have a below average level of distinctiveness. For the remaining public, neither of these English words have any meaning and therefore the earlier mark will not be broken down and will be considered normally distinctive.

The contested sign will be perceived by the English-speaking part of the public as ‘YOO AT WORK’, that is, someone with the Korean surname ‘YOO’ engaged in an activity or part of an email address, with the @ separating the address holder's name from their location (so having the same meaning when considered as a whole). The Opposition Division does not consider that the English-speaking part of the public would equate the verbal element ‘YOO’ with the personal pronoun ‘YOU’, since it is not common for this word to be misspelt in this way. The verbal element ‘YOO’ does not describe any characteristics of the services at issue and is therefore normally distinctive; the symbol @ has normal level of distinctiveness being a preposition/symbol that links the person with their location; and the verbal element ‘WORK’ has a low level of distinctiveness for the same reasons explained above. For the non-English-speaking part of the public, the contested sign will be perceived as part of an email due to its structure around the symbol @, but its verbal elements will be perceived as otherwise meaningless, and therefore of normal distinctiveness.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters (or sound of the letters) ‘W-O-R-K’, placed at the end of both signs and which make up a weak element for the English-speaking part of the public. They differ in the initial letters (or sound of the letters) ‘W-E’ vs ‘Y-O-O’ and in the pronunciation of the symbol @ (‘at’ in English, ‘arobase’ in French, ‘arroba’ in Spanish, ‘chiocciola’ in Italian, etc.) The presence of this symbol gives the signs a different structure, creating an additional difference both from a visually (the earlier mark will be seen as one word while the contested sign will be seen as two words connected by a symbol) and aurally (different number of syllables, intonation and rhythm).

Therefore, the signs are similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the English-speaking part of the public, the signs as a whole will be associated with a dissimilar meaning (the first person plural of the verb ‘to work’ vs part of an email address or a person with a Korean surname who is at work), and the coinciding concept in these signs, ‘WORK’, is weak. Therefore, the signs are only similar conceptually to a very low degree because they overlap in a weak element which will not necessarily indicate the commercial origin, while the differentiating elements convey different and more distinctive concepts. Regarding the rest of the relevant public, although they will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence:

• Witness Statement of Mr. Michael Fitzsimmons, Vice president of Creative Strategy for the opponent, stating, inter alia, that the opponent was founded in New York in 2010, that it provides shared office spaces and related amenities and services, that it has locations in 4 EU cities at the relevant date, and that it operates a mobile app,

• Exhibits 1-2: Printouts of the opponent´s website www.wework.com dated 17/05/2018 and undated images of WeWork spaces, as well as images of WeWork buildings (some undated, and other dated in 2016 and 2017).

• Exhibit 3: Article from Forbes magazine dated 10/07/2017 on the valuation of the opponent as a US company (the valuation is established according to documents filed in the US-Delaware Secretary of State). The only reference to the EU in this article is a statement that the opponent opened a new space in Paris in 2017.

• Exhibit 4: Article from The Financial Times dated 07/06/2017 reporting on the future opening of a location in London and stating that the opponent has opened 14 locations in the past 2,5 years.

• Exhibit 5: Article from The Financial Times dated 12/01/2018 reporting on the opening of a location in Manchester by the opponent after the relevant date.

• Exhibit 6: Article from The Wall Street Journal dated 07/06/2017 reporting on the valuation of the opponent as a US company.

• Exhibit 7: A selection of articles published in UK media (two articles dated 07/06/2017 from www.BDaily.co.uk and The Times on the opponent´s intention to open a location in London, stating it has 12 locations in London at that date; The Times article dated 27/04/2017 on Wework allowing dogs in their offices; The Sunday Times article dated 26/03/2017 on one of the founders of the opponent; an article dated 29/03/2017on www.startups.co.uk announcing future awards to grant funding to UK start-ups; an article dated 27/03/2017 on the same issue in The Telegraph; an article dated 03/03/2017 on www.startups.co.uk announcing the opening of applications for the opponent´s WeWork Labs programme; an article dated 14/02/2017 in the Hackney Gazette on a workspace for artists and designers opening in London; an article dated 29/01/2017 in The Sunday Times on the opponent´s aim to launch in Ireland with 2 offices).

• Exhibit 8: A selection of articles published after the relevant date (including an article on www.gov.uk dated 19/09/2017 on a business roundtable in New York held on that same date and hosted by the UK Prime Minister where the opponent is described as an innovative American collaborative workspace company with UK locations since 2014; The Irish Times article dated 27/09/2017 on the opponent´s intention to open its first location in Dublin; an article from www.bisnow.com on a new business line of the opponent foreseen for 2018; and article from Forbes magazine dated 28/03/2018 on Mr, Eugen Miropolski, MD at the opponent; an article from the Financial Times dated 18/07/2017 on a new joint venture in Japan between the opponent and SoftBank; an article from The Guardian dated 23/03/2018 on the opponent´s presence in London).

• Exhibit 9: A selection of screenshots of the opponent´s website taken from the ‘Wayback Machine’ from 2014-2017.

• Exhibit 10: Printouts from the Audience Overview tab for Google Analytics for the opponent´s website for the period 2010-2018, detailing the number of views.

• Exhibit 11: Extracts from the opponent´s social media accounts as they appeared at 10/05/2018, showing the number of followers on this date.

• Exhibit 12: Undated adverts on Google and Facebook.

• Exhibit 13: An Excel table with details of global Google performance figures for 2017-2018.

• Exhibit 14: Promotional documents on events (namely presentations, social events, start-up awards and conferences, at least some of which were invitation-only) hosted by the opponent in London on 20/10/2016, 28/10/16, 11/10/2017, 16/10/2017 and 28/02/2018 and in Paris on 22/07/2017.

• Exhibit 15: Extracts from the applicant´s website (the opponent and/or the earlier mark is not mentioned).

• Exhibit 16: Job offers for Community Manager positions with the opponent advertised on the opponent´s website in 2018.

• Exhibit 17: Searches conducted on the EUIPO register on 17/05/2018 for trade marks made up of ‘English personal pronoun’ + ‘WORK’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

It is clear from the evidence that the earlier trade mark has been subject to use at least in 4 European cities, and that the opponent has undertaken activities with the intention of promoting its brand and associated philosophy in the European Union. It is also evident that the opponent, a US company, has received a fair amount of outside investment and has a high valuation on the US market. This is evident from the press articles submitted as well as the advertisements and promotional events documented in the evidence. As the applicant correctly states, much of the evidence submitted postdates the relevant point in time, namely the priority date (or the filing date, where applicable) of the contested trade mark application. However, even taking this later evidence into account, the conclusion that the Opposition Division must reach remains the same. While the opponent´s marketing efforts are laudable and their business acumen unquestionable, the evidence provided is not sufficient to show that on the relevant date, the earlier mark has gained recognition by the relevant public. No information has been provided on the market share held by the mark nor on the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from a particular undertaking; the use that can be inferred from the documents provided is not shown to be particularly geographically widespread or long-standing; and no third party documents such as sales invoices, independent surveys or statements from chambers of commerce and industry or other trade and professional associations have been provided.

Even if the Opposition Division were to consider that the earlier mark had acquired some enhanced distinctiveness in the UK due to the marketing efforts of the opponent, this would only be enough to raise the distinctiveness of the earlier mark in this territory to a normal level, given what has been stated above in section c) of this decision. As this is the most advantageous scenario for the opponent, the Opposition Division will consider that the earlier mark had acquired some enhanced distinctiveness in the UK.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated, the distinctiveness of the earlier mark must be seen as normal for all the services in question.

5. Global assessment, other arguments and conclusion

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

In the present case, the services are identical and directed at the public at large and at business customers with specific professional knowledge or expertise, whose degree of attentiveness may vary from average to high. The signs are visually, aurally and conceptually similar to a very low degree. The distinctiveness of the earlier mark is normal.

The very low degree of visual and aural similarity is not enough to counteract the differences between the signs, even for identical goods. Although the signs coincide in the letters ‘WORK’, there is no likelihood of confusion as they are placed at the end of both marks and the additional differing elements/letters placed at the beginning of the signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common elements are of limited distinctiveness for part of the relevant public and are not the dominant elements of the signs.

As seen above, the opponent did not prove that its earlier mark enjoys a higher than average degree of distinctiveness on account of its extensive use on the market. Under the principle of interdependence the low degree of similarity of the marks would require some degree of enhanced distinctiveness, even for identical goods. Otherwise there would be no room for the factor of enhanced distinctiveness (see 17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 58). There can be no automatism for finding a likelihood of confusion in instances where the similarity is only low (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 69). - 26/09/2018, R 2284/2017-2, Reeflowers (fig.) / flower (fig.)

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on this ground.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides no information on the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, or the market share of the trade mark. Although the opponent´s mark is mentioned favourably in some press articles, the evidence does not show the degree of recognition of the trade mark or that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

Jorge ZARAGOZA GÓMEZ

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.