OPPOSITION No B 3 048 023

Ideas&Management S.L., Calle Beethoven 4, 1‑1, 43007 Tarragona, Spain (opponent), represented by Teresa Barceló Rebaque, C/ Mallorca 264, 2º 2ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Camelia Dederichs, Zur Eisengrube 6, 53947 Nettersheim, Germany (applicant).

On 20/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 023 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 17 482 902 for the figurative mark , namely against all the goods and services in Classes 9 and 35. The opposition is based on European Union trade mark registration No 17 007 162 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.

a) The goods and services

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

Class 35: Advertising, marketing and promotional services; advertising, marketing and promotional consultancy, advisory and assistance services; business advice relating to strategic marketing; consultancy relating to the organisation of promotional campaigns for business; consultancy regarding advertising communications strategy; advertising and marketing consultancy; exhibitions (conducting -) for advertising purposes; exhibitions (conducting -) for business purposes; organization of exhibitions for commercial or advertising purposes; consultancy services regarding business strategies; business management and organization consultancy; business advisory and information services; business consultancy services relating to the supply of quality management systems; business organisation and management consultancy in the field of personnel management; business management and organization consultancy; business consultancy services relating to data processing; personnel management consulting.

Class 42: Computer software consultancy; consultancy and information services relating to the design, programming and maintenance of computer software; providing information, advice and consultancy services in the field of computer software.

The contested goods and services are the following:

Class 9: Recorded content; information technology and audio-visual, multimedia and photographic devices; magnets, magnetizers and demagnetizers; scientific and laboratory devices for treatment using electricity; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; parts and fittings for all of the aforesaid goods, included in this class, in particular recorded media, spectacles, sunglasses and contact lenses, games software.

Class 35: Advertising, marketing and promotional services; commercial services and consumer information, namely auctioneering, rental of automatic vending machines, brokerage, organising business contacts, collective buying, commercial evaluation, preparation of competitions, agency business, import and export services, negotiation and brokerage, ordering, price comparison, procurement services, for others, subscription services; retailing and wholesaling in relation to clothing, foodstuffs, stationery, downloadable music files, downloadable electronic publications, sports strollers and buggies, clothing and clothing accessories, sports equipment, musical instruments, printed matter, footwear, saddlery, bags, umbrellas, jewellery, sporting articles, games, toys, sporting goods, sweets; business assistance, management and administrative services; business analysis, research and information services; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class.

Some of the contested goods and services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and 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 and services assumed to be identical target the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high given that, for example, consumers of business management services have a particular interest in choosing services which may have an important impact on the smooth running of their business.

c) 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).

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.

The earlier mark consists of a simplified image of a smiling heart with closed eyes above the words in standard handwriting font ‘Happy & Healthy’, represented in equal proportions of green, yellow, red and magenta. Contrary to the opponent’s claim, it is hard to perceive that the mark has a check mark in the item. The word ‘HAPPY’ is a basic English word that is known to the relevant public (see in respect to the relevant public in the European Union 15/07/2015, T‑352/14, HAPPY TIME / HAPPY HOURS, EU:T:2015:491, § 39; and 30/04/2015, T‑707/13 & T‑709/13, BE HAPPY, EU:T:2015:252, § 30) as meaning ‘feeling, showing, or expressing joy; pleased’, ‘causing joy or gladness’. The word ‘HEALTHY’ of the earlier sign will be understood by the English-speakers as referring to ‘in good physical shape’. However, for the non-English speaking part of the public it has no meaning. The expression contained in the sign and the figurative element have no meaning for the relevant public in relation to the services in question and therefore they have a normal degree of distinctiveness.

The contested sign consists of a cartoon image of a smiling heart with eyes wide open, one hand is showing its thumb up and the other hand is holding a red tick. The heart is above the verbal element ‘hÄPPiUs’ where each letter is depicted in different size and colour: blue, orange, green, yellow, pink, dark green and the dots are in red. The cartoon has no meaning for the relevant public in relation to the contested goods and services and therefore it has a normal distinctiveness.

The opponent claims that the verbal element ‘HÄPPI’ will be understood as ‘HAPPY’. However, the Opposition Division considers that due to the ‘A umlaut’, the combination of small and capital letters and the fact that the entire verbal element is not ‘HÄPPI’ but ‘hÄPPiUs’, the relevant public will perceive the element as a whole without splitting it into separate components. In other words, the verbal element of the contested sign will be perceived as a fanciful word, without a meaning. Therefore it has a normal degree of distinctiveness in relation to the goods and services in question.

The earlier mark and the contested sign have no elements that could be considered clearly more dominant than other elements.

The opponent points out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly 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. However, 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).

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).

Visually, the signs coincide as far as they are both composed of a figurative element in the shape of a heart and a verbal element. However, the conflicting marks give an overall impression that differs significantly. The heart-shaped image of the earlier mark is comparatively simple and stylised that can be drawn with one line and two rotated brackets. Both verbal and figurative elements are depicted in four colours of equal proportions. The contested sign consists of a cartoon heart with rather personalised anthropoid features like hands, eyes, teeth, chin, etc. The verbal element of the contested sign is relatively shorter than the one of the earlier mark and each letter is in different colour and size, which is quite different from the half-word-one-colour in handwriting font of the earlier mark.

Therefore, the signs under comparison are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‛HAPPY/I’, present in both signs. However, the earlier mark is composed of two words connected with an ampersand, which will be pronounced with around twelve phonemes depending on the language, whereas the contested sign consists of six phonemes.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the depiction of a heart, included in both signs, is likely to be associated with a similar meaning, as explained above. However, they differ in the additional concepts conveyed by the verbal elements of the earlier trade mark. Since the figurative elements have less impact on the consumer, the signs are conceptually lowly similar.

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. 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, for reasons of procedural economy, the examination of the opposition has been carried out as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined. They are directed at the public at large as well as business customers with a degree of attention that varies from average to high. The earlier mark is inherently distinctive to a normal degree.

Contrary to the opponent’s observations, it has been concluded that the signs are visually, aurally and conceptually similar to a low degree. Indeed, the differences between the signs outweigh the similarities in the present case, namely the signs differ in the particular features of their figurative elements, their colours and stylisation of their letters, as described above.

The opponent refers to the fact that the signs coincide aurally in the element ‛HAPPY/I’, however the Opposition Division considers that the element ‘HÄPPI’ will not be understood as a separate word, but it will rather be perceived as the fanciful word ‘hÄPPiUs’. Furthermore the different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

Notwithstanding the assumed identity of the goods and services, given the low degree of similarity between the signs there is no likelihood of confusion (including a likelihood of association) in the present case. The Opposition Division considers that the differences between the signs are sufficient to allow the relevant public throughout the relevant territory to safely distinguish between the signs. 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Carlos MATEO PÉREZ

Stanislava STOYANOVA

Marta GARCÍA COLLADO

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.