OPPOSITION No B 3 035 766

Flow Consulting GmbH, Spörckenstr. 89, 29221 Celle, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte PartGmbB, Theodor-Heuss-Str. 1, 38122 Braunschweig, Germany (professional representative)

a g a i n s t

Oneflow AB, Linnegatan 9, 114 47 Stockholm, Sweden (applicant), represented by Advokatfirman Delphi Kb, Mäster Samuelsgatan 17, 111 84 Stockholm, Sweden (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 766 is upheld for all the contested services, namely:

Class 35: Corporate management assistance; Assistance and advice regarding business organisation and management; Providing assistance in the field of business organization; Providing assistance in the field of business management; Providing assistance in the field of business promotion; Providing assistance in the field of business management and planning; Providing assistance in the management of business activities.

2. European Union trade mark application No 17 232 414 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 232 414 , namely against some of the services in Class 35. The opposition is based on, inter alia, German trade mark registration No 2 068 360 for the word mark ‘FLOW’. 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.

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 German trade mark registration No 2 068 360, since it is the earlier mark that shows more similarities with the contested sign, as it will be explained below.

1. The services

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

Class 35: Personnel consultancy, organizational consultancy in relation to personnel management and development; Business management and organization consultancy; Marketing; Arranging and conducting of seminars, meetings and congresses.

The contested services are the following:

Class 35: Corporate management assistance; Assistance and advice regarding business organisation and management; Providing assistance in the field of business organization; Providing assistance in the field of business management; Providing assistance in the field of business promotion; Providing assistance in the field of business management and planning; Providing assistance in the management of business activities.

The contested corporate management assistance; assistance and advice regarding business organisation and management; providing assistance in the field of business organization; providing assistance in the field of business management; providing assistance in the field of business management and planning; providing assistance in the management of business activities are included in the broad category of, or overlap with, the opponent’s business management and organization consultancy. Therefore, they are identical.

The contested providing assistance in the field of business promotion is included in the broad category of the opponent’s marketing. Therefore, they are identical.

The applicant claims that both companies are active within two different fields, namely management consultancy versus IT industry. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

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 business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the ordered services.

3. The signs

flow
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the contested sign, as the applicant pointes out, the relevant public will distinguish two components, namely the English words ‘one’ and ‘flow’.

English is nowadays the global language of business and professionals in business consulting and publicity generally have a good command of English. In the present case, the relevant public being professionals, because of its knowledge and experience, will be able to understand the conceptual meaning of the English term ‘flow’, present in both signs, which refers to ‘the action or fact of moving along in a steady, continuous stream’ or ‘a steady, continuous stream or supply of something’. Furthermore, it is also used in German by reference to some English expressions, such as ‘cash flow’.

In its observations, the applicant argues that the word ‘flow’ is a very basic word and that very limited protection should be given to it because there are other trade mark registrations that include this element for services in Class 35. In support of its argument the applicant refers to one EU trade mark registration. The Opposition Division notes that the existence of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘flow’. Under these circumstances, the applicant’s claim must be set aside.

Therefore, since the element ‘flow’ that the signs have in common has no direct connection with the relevant services as it does not describe in any manner any of their characteristics, it has an average degree of distinctiveness.

As for the first component of the contested sign, ‘one’, it can refer either to ‘the cardinal number 1’ or to the notion of a single unit. Due to its position in the said sign as well as the fact that it is a basic English word, the Opposition Division finds that it will be perceived with its meaning as a single unit by the relevant public. Furthermore, the element ‘one’ in combination with the element ‘flow’ will be perceived as a reference to an action or fact of moving along in a steady, continuous stream or to a steady, continuous stream or supply of something (as one of a few/many). Therefore, this element is considered weak.

It follows that the element ‘flow’ in the contested sign would be isolated due to the concept perceived by the relevant public. As a consequence, since the element ‘flow’ of the contested sign would be perceived as a separate word, it is in a way independent even if it is not a separate element in the sign.

Visually and aurally, the signs coincide in the element/phonemes ‘flow’, which is the entire earlier mark and the most distinctive element in the contested sign. The signs differ in the element/phonemes ‘one’, which is weak, and from a visual perspective also in the figurative aspects of the contested sign, which have a lower impact.

It also must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

Therefore, bearing in mind the above considerations, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a very similar meaning since the concept of ‘one’ in the contested sign has a limited impact, the signs are conceptually highly 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 has no direct 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 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. 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).

In the present case, the services are identical and target professionals with a degree of attention that varies from average to high. The earlier mark has a normal distinctiveness.

The signs are highly similar from a visual, aural and conceptual perspective. Indeed, the earlier mark is totally reproduced in the contested sign, where it will be perceived by the relevant public as an independent and distinctive component. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26). Furthermore, the differing element ‘one’ of the contested sign is weak and the figurative aspects of this sign have a lower impact for the relevant public, as explained above.

The applicant emphasises the importance of the beginnings of conflicting signs for the consumer’s perception of the signs. Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases (16/05/2007, T‑158/05, Altrek, EU:T:2007:143). In the present case, the integral reproduction of the earlier mark in the contested sign outweighs this difference overall.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public, even if the public displays a higher than average degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 2 068 360. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier German trade mark registration No 2 068 360 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).

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

Adriana VAN ROODEN

Marta GARCÍA COLLADO

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.