OPPOSITION No B 2 974 247

T-Groep, NV, Stationsstraat 120, 2800, Mechelen, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000, Antwerpen, Belgium (professional representative)

a g a i n s t

Talentory AG, Okenstr. 6, 8037, Zürich, Switzerland (applicant), represented by Farago Patentanwalte, Thierschstr. 11, 80538, München, Germany (professional representative).

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 844 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 131 509 , namely against some of the services in Class 35. The opposition is based on Benelux trade mark registration No 739 346 . The opponent invoked Article 8(1)(b) EUTMR.

RESTITUTIO IN INTEGRUM

On 23/04/2018, the Office invited the applicant to submit observations in reply to the opposition and to the facts and arguments of the opponent on or before 23/06/2018.

On 21/06/2018 the applicant requested an extension and the Office gave the applicant a new time limit until 23/08/2018.

The applicant did not submit any documents within the prescribed time limit.

On 07/09//2018 the Office informed the parties that no further observations should be submitted and that the Office will rule on the opposition.

On 12/09/2018 the applicant sent a letter to the Office explaining that on 23/08/2018 it sent a request for the opponent to prove the use of its earlier mark.

On 23/10/2018 the Office confirmed that the said letter was not received at the Office.

On 10/12/2018 the applicant claimed Restitutio in integrum

According to Article 104(1) EUTMR, any party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have its rights re-established if the obstacle to compliance has the direct consequence of causing the loss of any right or means of redress.

According to Article 104(2) EUTMR, the application shall be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit.

According to Article 104(3) EUTMR, the application shall state the grounds on which it is based and shall set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid.

a) On the substance of the request for restitutio in integrum

Under the terms of Article 104(1) EUTMR, for an application for restitutio in integrum to be granted, the following requirements must be met:

i. the person requesting the restitutio in integrum has been unable to comply with a time limit vis-à-vis the Office;

ii. the non-observance of the time limit has the direct consequence, by virtue of the provisions of the Regulation, of causing the loss of any right or means of redress; and

iii. time limit has not been observed in spite of all due care required by the circumstances having been taken.

i. Non-observance of a time limit

One of the basic requirements for a request for restitutio in integrum to be granted is that the party to the proceedings ‘...was unable to observe a time limit vis-à-vis the Office...’

The applicant was given until 23/08/2018 to submit arguments in reply to the opposition. The applicant did not submit any arguments before the expiry of the time limit referred to. The applicant did submit arguments in reply accompanying the request for restitution in integrum, filed on 10/12/2018.

It follows from the above that the applicant was not able to observe a time-limit vis-à-vis the Office with regard to the documents submitted subsequently on 10/12/2018.

Therefore, this requirement is fulfilled.

ii. Loss of right

Another basic requirement for an application for restitutio in integrum to be granted is that the non-observance of a time limit has caused a loss of right.

In these proceedings, the applicant has lost the right to submit arguments in reply to the opposition. This loss of right is a direct consequence of the fact that the applicant did not submit the arguments in reply within the deadline referred to above. In practice, this means that the applicant has lost the right to reply to the opposition, and that the Opposition Decision will be taken without taking into account its arguments.

Therefore, this requirement is fulfilled.

iii. Due care

In order for the restitution in integrum to be granted, the party must have taken all due care required by the circumstances to observe the time limit.

Restitutio in integrum implies a duty of diligence for the parties, which extends to duly authorized professional representatives. The standard of due care required of a representative to avoid the loss of rights due to a missed deadline will generally be higher than for a party to the proceedings before the Office.

The representative must maintain a system of internal control and monitoring of time limits that generally excludes the involuntary non-observance of time limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot be predicted from experience (See 13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 26)

Therefore, the Opposition Division has to ascertain whether the applicant’s representative took ‘all due care required by the circumstances’ in order to avoid a loss of rights.

The applicant submitted evidence that provides a thorough explanation on the procedure usually followed by the representative in these kind of cases. It contains a sworn statement explaining the proceedings that are followed in order to avoid mistakes of any kind, pictures of the representative´s agenda and the instructions received by its client.

The representative explains what happened in this precise case by referring to its usual way of checking internal dockets of fax transmissions, but that its has no specific recollection of what went wrong in the transmission by fax of its letter of 23/08/2018. As a consequence of this, it missed the deadline of 23/08/2018 to submit observations in reply to the opposition and to the facts and arguments of the opponent, referred to above.

Taking into account the arguments of the applicant and the evidence submitted, it is considered that they are not valid to demonstrate that the applicant has acted in this case with all due care required by the circumstances. The applicant did not check that the request for proof of use had been received by the Office and processed. The way in which the applicant usually deals with the proceedings in this kind of circumstances, is not relevant to justify the granting of restitutio in Integrum in line with Article 104 EUTMR and it is not considered to constitute exceptional circumstances that cannot be predicted from experience, as claimed.

Indeed, representatives must maintain a system of internal control and monitoring of time limits that generally excludes the involuntary non-observance of time limits. The Opposition Division considers that the applicant’s representative did not show all due care in ensuring that the extension of time had been correctly requested and granted by the Office. Likewise, it has not been proven that there were exceptional circumstances and unforeseeable events which were beyond the control of the applicant’s representative.

Therefore, having examined the applicant’s request, evidence and explanations, the Opposition Division finds that the reasons set forth are not sufficient under the terms of Article 104(1) EUTMR and it is concluded that all due care has not been taken to comply with the deadline.

b) Conclusion

Taking into account the evidence and explanations given by the applicant’s representative, the Opposition Division concludes that the applicant’s representative did not show that there were exceptional circumstances which were beyond his control and that he had taken ‘all due care’ required by the circumstances in order to avoid a loss of right.

Therefore, the Opposition Division rejects the request for restitutio in integrum and will not take into account the request for proof of use filed on 23/08/2018.

The purpose of Article 104 EUTMR is to provide the parties with the possibility to remedy an omission due to exceptional and unforeseeable circumstances but not to remedy simple negligence or errors of the parties or their representatives. This is an exceptional provision and the conditions for its application have to be construed strictly.

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.

a) The services

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

Class 35: Employment and human resources consultancy; personnel selection through psychological research; recruitment; personnel placement; trade information; market survey, research and analysis; business organizational advice and business consulting; advice on career choices; opinion polls; fairs and exhibitions for commercial or publicity purposes; database services containing information about job offers; interim management; business administration; administrative services.

The contested services are the following:

Class 35: Employment agencies; personnel recruitment; personnel selection using psychological testing; personnel consultancy; negotiation and conclusion of commercial transactions for third parties; commercial information and advice for consumers [consumer advice shop];employment outplacement services; outsourcing services[business assistance].

Some of the contested services are identical to the services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark, which, for the opponent, is the best light in which the opposition can be examined.

b) 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 goods assumed to be identical are directed at the public at large as well as at business customers with specific knowledge or expertise. The degree of attention will vary from average to higher than average depending on the price and specialised nature of the services.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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).

Both signs are figurative marks.

The earlier mark consists of a slightly curved, lower case letter ‘t’ depicted in red with a truncated base. To the right of this letter is the word ‘interim’, written in smaller, standard, lower case letters in black.

The contested sign consists of the letter ‘T’ depicted in white on a black circular background. The letter ‘T’ in the contested sign has a small indentation extending from the left-hand side, but it is still clearly recognisable as a letter ‘T’. The black circular background, is purely decorative and, therefore, less distinctive than the verbal element.

Single letters or single numbers are not devoid of any distinctive character (09/09/2010, C‑265/09 P, α, EU:C:2010:508; 09/07/2008, T‑302/06, E, EU:T:2008:267). However, the distinctive character of single-letter trade marks may generally be more difficult to establish (05/11/2011, T‑378/12, X, EU:T:2013:574, § 43). In the present case, being a single letter ‘T’, the contested sign has only a low degree of inherent distinctiveness, and the letter will be seen in conjunction with its stylisation and the figurative element.

The word ‘interim’ in the earlier mark is a Latin word that can be translated as ‘meanwhile’ and has been adopted in English. It will be understood by the relevant public with some of the meanings attributed to it as an adjective — ‘temporary, provisional, or intervening’ — or as a noun — ‘a temporary or provisional arrangement’ — since the word exists as such in the relevant languages or has very similar equivalents: ‘interim’ in Dutch, meaning ‘interim engagement; replacement, substitution; temporary replacement’ (information extracted from Van Dale Onlinewoordenboek on 10/12/2018 at http://www.vandale.nl/opzoeken); ‘interim’/‘Interim’ in German, meaning ‘interim; mean time; provisional, temporary arrangement’ (information extracted from Duden — Deutsches Universalwörterbuch at http://www.duden.de/rechtschreibung/Interim); and ‘intérim’ in French, meaning ‘a time interval during which a function is performed by someone other than the titular; performance of duties during the absence of the titular; temporary employment’ (information extracted from Larousse Dictionnaires de Français on 10/12/2018 at http://www.larousse.fr/dictionnaires/francais). Therefore, the word ‘interim’ is weak, as it refers to the purpose of the services.

For the letter ‘t’ of the earlier mark, the considerations set out above regarding the contested sign are equally valid.

Neither of the marks under comparison has any elements that could be considered clearly more dominant (visually eye‑catching) than other elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the presence of the letter ‘T’. However, they differ in the typefaces and colours applied to the letters and in the additional word element ‘interim’ of the contested sign, which has no counterpart in the contested sign. The contested sign differs in its figurative element, which is purely decorative.

Taking into account the fact that the contested sign is composed of one letter only, it is considered that the differences between the signs introduced by the additional letters ‘interim’ of the earlier mark will not go unnoticed by the relevant consumers when they perceive the marks visually, even though the word is non-distinctive. Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛T’, present identically in both signs. The pronunciation differs in the sound of the letters ‛interim’ of the earlier mark, which have no counterparts in the contested sign.

Taking into account the non-distinctiveness of the element ‘interim’ in the earlier mark, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain a letter ‘T’, they are conceptually similar to a low degree.

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

d) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all of the services in Class 35 for the relevant territory, namely Benelux.

e) 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).

The goods are assumed to be identical and they target the public at large as well as business customers with specific knowledge or expertise. The degree of attention will vary from average to higher than average depending on the price and specialised nature of the services. Furthermore, the earlier mark has a lower than average degree of distinctiveness.

The signs under comparison are visually similar to a very low degree, aurally similar to an average degree and conceptually similar to a low degree. The similarities between the signs are limited to the inclusion of a letter ‘T’, but it is depicted differently, and the signs also differ in their colours, lengths, constituent elements and structures.

Considering this, the way the letter appears in each sign is determinant. The letter is depicted in a very different manner in the two signs. As mentioned above, the signs are visually similar to a very low degree and — in spite of identity of the services — this is not sufficient to find a likelihood of confusion.

Considering all the above, even assuming that the services are identical there is no likelihood of confusion on the part of the public. Therefore, 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

Irina SOTIROVA

Loreto URRACA LUQUE

Janja FELC

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.