OPPOSITION Nо B 3 065 028

 

Bio Pappel Scribe, S.A. de C.V., Avenida Ejército Nacional No. 1130, piso 9, Colonia Los Morales Polanco, Alcaldía Miguel Hidalgo, 11510 Ciudad de México, Mexico (opponent), represented by Padima, Explanada de España, nº 11, Piso 1º, 03002 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Zuora, Inc., 1051 E. Hillsdale Blvd., Suite 600, Foster City, 94404 California, United States of America (applicant), represented by Beck Greener LLP, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom and Beck Greener, Calle Italia, 22 Local Bajo, 03003 Alicante, Spain (professional representatives).

On 23/03/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.		Opposition No B 3 065 028 is rejected in its entirety.
2.	The opponent bears the costs.

 

REASONS

 

On 26/09/2018, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 514 902 ‘SUBSCRIBED’ (word mark), namely against all of the goods and services in Classes 16 and 35. The opposition is based on European Union trade mark registration No 11 714 409 (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 goods and services on which the opposition is based are the following:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes, exercise books, notebooks, folders and writing pads, paper for printing and writing; Paper for photocopying; Paper mache; Food wrapping paper; Toilet paper; Table napkins of paper; Paper handkerchiefs; Towels of paper; markers for writing (stationery).

Class 18: Backpacks to wear on the back, bags and trunks for travel, briefcases.

Class 35: Wholesaling and retailing in shops and wholesaling and retailing via global communications networks of all kinds of goods of paper and cardboard, exercise books, notebooks, folders and writing pads, paper for printing and writing, paper for photocopying, paper-board, paper for wrapping foodstuffs, toilet paper, table napkins of paper, handkerchiefs of paper, towels of paper, markers for writing (stationery), backpacks, bags, trunks and briefcases; Import and export, business management assistance in relation to franchising, advertising; Business management; Business administration; Office functions.

The contested goods and services are the following:

 

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers' type; printing blocks; publications; books; magazines; business magazines; magazine and newspaper sections, supplements and columns; albums; anthologies; address books; booklets; calendars; catalogues; diaries; envelopes; maps; leaflets; notelets; postcards; postcard books; sheet music; writing paper; canvasses for painting; calligraphy books; calligraphy pens; chalk; crayons; decalcomanias; easels; modelling clay; painters' brushes; palettes for painters; papier mache; pastels; pens; pencils; pencil erasers; pencil sharpeners; sketch pads and water colour pads; ink pads; inkwells; paper clips; personal seals; embossing stamps; labels; rubber and plastic stamps; stencils; stickers; transfers; writing instruments; bookends; bookmarks; drink coasters and place mats of paper and cardboard; letter racks; paper weights; pen cases; pen holders; pencil holders; paint boxes; stationery boxes; writing portfolios; greeting cards; gift tags; giftwrap; wrapping and packaging materials; etchings; engravings; figurines, statues, statuettes and sculptures of papier mache; lithographic works of art; paintings (framed or unframed); pictures (framed or unframed); posters (framed or unframed); prints (framed or unframed); photographs (framed or unframed); parts, fittings and accessories for all the aforesaid goods.

Class 35: Advertising; Business management; Business administration; Office functions; marketing, promotion and endorsement services; market research services; providing business assistance, advice, and information; provision of advertising, marketing and promotional space on web sites, publications and in other content and media; business and commercial analysis, research and information services; business information directory services; retail services connected with the sale of audio, visual and audio visual recordings, and printed and downloadable content including in relation to business, entertainment and education; retail services online retail services and mail order services connected with the sale of computer hardware, software and firmware; retail services online retail services and mail order services connected with the sale of music, films, videos, film clips, music clips, photographs and texts; retail services, online retail services and mail order services connected with the sale of software, games, electronic games, printed matter, publications, non-printed publications, books, magazines, publicity documents, entertainment and educational documents, television and radio programmes, broadcasts and podcasts; retail services, online retail services and mail order services connected with the sale of: office requisites, office machinery, instructional and teaching materials and apparatus, wrapping and packaging materials, plastic materials for packaging, gift wrapping, paper and plastic bags, prints, and posters; retail services, online retail services and mail order services connected with the sale of: cards, greetings cards, gift tags, calendars, diaries, books, pamphlets, manuals, magazines, periodical publications, newspapers, newsletters, pressure sensitive stickers, book covers and book marks; retail services, online retail services and mail order services connected with the sale of: clothing, headgear, bags, games, toys and playthings; provision of business and commercial information research, advice and assistance relating to goods, services and suppliers of goods and services; compiling and maintaining directories and databases of business, commercial and consumer information relating to goods and services and their suppliers; business introduction services; business agency services for artists, writers, actors, models, performers, photographers and others involved in the business, entertainment, educational, cultural, content, advertising, fashion, media, creative and other industries; dissemination of advertising, marketing, promotion, public relations, endorsement and publicity materials; compilation and transcription of data; compilation of advertisements for use as web pages on the Internet; compilation of directories; advertising, marketing and promoting goods and services by distribution and transmission of advertisements including advertisements in the nature of audio, video, text messages and emails via wireless and mobile devices; distribution of samples; organization of fairs and trade shows for business, advertising and promotion purposes; shop-window dressing; auctioneering services; advice, assistance, information, analysis and consultation services in the field of auctioneering; business information, research, assistance and advice; accountancy services; data-processing services; sorting and editing of information in computer databases; searching for data in computer databases; personnel and human resource services; recruitment services; purchasing services; organisation and management of business incentive and loyalty schemes; administrative processing and organising of mail order services; arranging of business introductions; business research and survey services; business forecasting services; provision of business, clerical and secretarial services; news and current affairs clippings services; provision of business and commercial information research, assistance and advice to prospective purchasers of goods and services; answering and message handling services; managing remote monitoring centres; data management and electronic stocktaking services; providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid.

 

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.

 

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.

 

Contested goods in Class 16

 

Paper and cardboard are identically contained in both lists of goods.

The contested printed matter is a broad category that includes goods such as colouring books, activity books, diaries, address books and also the opponent’s exercise books. In the same sense, the contested broad category of instructional and teaching material (except apparatus) includes goods such as pre-printed exercise books. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested bookbinding material overlaps with the opponent’s paper insofar as both categories include book repair paper for book binding purposes. The goods are, therefore, considered identical.

The contested stationery; office requisites (except furniture); writing instruments include, as broader categories, the opponent’s markers for writing (stationery). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested artists' materials overlap with the opponent’s paper insofar as both categories include goods such as sketchpads. Therefore, they are considered identical.

The contested books cannot be clearly filtered from the opponent’s exercise books. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested address books cannot be clearly filtered from the opponent’s notebooks, given that the former effectively are notebooks used for writing down and storing names, addresses and telephone numbers. Therefore, these goods are considered identical.

Writing paper is identically contained in both lists of goods, despite the differences in the wordings (i.e. paper for writing in the opponent’s list).

The contested calligraphy books cannot be clearly filtered from the opponent’s exercise books which include books for practicing calligraphy and pencraft in general. These goods are, therefore, identical.

The contested papier mache is identical to the opponent’s paper mache, despite the difference in the spellings.

The contested sketch pads and water colour pads are included in the broad category of the opponent’s paper. They are, therefore, considered identical.

The contested writing portfolios include writing pads with ornamental or personalised stationery. To that extent, these goods cannot be clearly filtered from the opponent’s writing pads and they are, therefore, considered identical.

The contested giftwrap; wrapping and packaging materials overlap with the opponent’s paper, insofar as they all include paper giftwrap and paper packaging materials. They are, therefore, considered identical.

The contested plastic materials for packaging on the one hand, and the opponent’s food wrapping paper on the other hand, serve the same purpose and share the method of use. They target the same public which can perceive these goods as interchangeable materials for wrapping and packaging foodstuffs and look for them in the same channels of distribution. Therefore, these goods are similar to a high degree.

The contested canvasses for painting serve the same purpose as certain types of the opponent’s paper which includes paper for painting, water colouring etc. They have a similar method of use and can be seen as goods in competition. Furthermore, they are commonly sold in the same places, for example shops dealing in artists’ materials and target the same public which can expect that they are produced under the control of the same undertaking. These goods are, therefore, similar to a high degree.

The contested drink coasters and place mats of paper and cardboard are commonly displayed for sale next to the opponent’s table napkins of paper. Furthermore, such goods can be offered as a set, with matching design and print. They share the same purpose in the sense of being disposable goods for setting a table. They originate from the same type of companies and move through the same channels of distribution, targeting the same consumers. Therefore, they are similar to a high degree.

The contested greeting cards; gift tags are typically sold in close proximity to paper giftwrap, goods that are covered by the broad category of the opponent’s paper. They can be offered in sets with matching design and print. Consumers expect that such goods originate from the same undertakings and look for them in the same places. Furthermore, broadly speaking, they serve the same needs of the public in the sense that they are used for gift presentation and decoration purposes. These goods are, therefore, similar to a high degree.

The contested albums are books or binders consisting of blank pages, pockets, or envelopes for keeping photographs, stamps etc. These goods serve a similar purpose to that of the opponent’s folders as the latter include binders or files for holding loose papers etc. These goods commonly originate from the same producers and satisfy the needs of the same public which looks for them in the same retail outlets. They are, therefore, similar.

The contested calendars; diaries are usually produced by the same type of companies that also offer the opponent’s notebooks. They are commonly found in the same specialised stores and sections of department stores dealing in printed stationery and school supplies. Furthermore, they target the same relevant public. They are, therefore, similar.

The contested envelopes are typically sold in specialised stores or sections of department stores that deal in paper stationery and also offer office requisites made of paper, such as the opponent’s folders. Furthermore, such goods serve a similar purpose, for example to hold or wrap loose papers etc. These goods originate from the same type of companies and target the same public. They are, therefore, similar.

The contested adhesives for stationery purposes are usually sold in the same specialised stores and sections of department stores as the opponent’s paper which encompasses paper stationery items. Furthermore, they target the same public. Therefore, these goods are similar to a low degree.

The contested adhesives for household purposes include goods such as adhesive bands and tapes which are important for the use of, and thus complementary to, certain wrapping materials, including the opponent’s food wrapping paper. Furthermore, these goods target the same relevant public which looks for them in the same places of sale. Therefore, they are similar to a low degree.

The contested paintbrushes; painters' brushes are used for painting, arts and crafts projects etc. The contested calligraphy pens; chalk; crayons; palettes for painters; pastels; pens; pencils; pencil erasers; pencil sharpeners; stencils are writing/drawing instruments, or may be, artists’ materials. The contested easels are used to support or display an artist’s canvas or picture. The contested modelling clay is an artist’s material used, inter alia, to sculpt a three-dimensional model as a preparatory step before painting. The contested ink pads; inkwells are used for ink drawing. The contested pen cases; pen holders; pencil holders; paint boxes; stationery boxes are carriers that can be used also for artists’ materials. On the other hand, the opponent’s paper includes goods such as sketch paper, paper for water colours, paper stock etc. In specialist shops and dedicated sections of department stores dealing in arts supplies, the contested goods and the opponent’s paper can be found in close proximity to each other and they are directed at the same consumers. Such goods can be also sold in sets. Therefore, they are similar to a low degree.

The contested notelets are folded cards with a printed design on the front, for writing a short informal letter. In stationery shops and sections of department stores, these goods can be found next to pens, pencils and also the opponent’s markers for writing (stationery), and they are directed at the same consumers. Furthermore, these goods are frequently sold together in sets. These goods are, therefore, similar to a low degree.

The contested paper clips are used to fasten papers together. The contested labels; stickers are commonly used for storing or highlighting information in an office environment, at school etc. Such goods are commonly offered for sale in close proximity to the opponent’s folders, also considering that paper clips, labels and stickers are often used on, or in, printed files. Since the goods under comparison serve a similar purpose, they are considered to satisfy the needs of the same consumers. They are, therefore, similar to a low degree.

With regard to the term parts, fittings and accessories for all the aforesaid goods at the end of specification of the contested goods and insofar as it relates to the goods found identical or similar (to varying degrees) as detailed hereinabove, it must be emphasised that the term will be considered only insofar as it reasonably applies to the goods listed. Although some specific items covered by that term may be dissimilar to the main goods that they relate to, the broad category of parts, fittings and accessories for all the aforesaid goods, which cannot be dissected ex officio, must be considered to include goods that coincide with the opponent’s goods at least in their distribution channels and the relevant public. For example, parts of the contested paintbrushes are handles made of wood or plastic for paint brushes; these goods are usually sold in artists’ supplies shops and satisfy the needs of the same consumers as the opponent’s paper, as explained above, leading to the finding that the goods are similar to a low degree. Therefore, the contested parts, fittings and accessories for all the aforesaid goods in relation to all the abovementioned contested goods, found identical or similar to varying degrees, are also considered similar to a low degree to the respective opponent’s goods.

However, the contested photographs; typewriters; printers' type; printing blocks; publications; magazines; business magazines; magazine and newspaper sections, supplements and columns; anthologies; booklets; catalogues; maps; leaflets; postcards; postcard books; sheet music; decalcomanias; personal seals; embossing stamps; rubber and plastic stamps; transfers; bookends; bookmarks; letter racks; paper weights; etchings; engravings; figurines, statues, statuettes and sculptures of papier mache; lithographic works of art; paintings (framed or unframed); pictures (framed or unframed); posters (framed or unframed); prints (framed or unframed); photographs (framed or unframed) do not share sufficient factors in common with any of the opponent’s goods in Class 16.

Part of the abovementioned goods, such as photographs, publications, magazines, booklets, anthologies, catalogues, maps and postcards are primarily purchased because of their content or subject matter. Although it is admittedly true that paper and cardboard are carriers of the content, there is a vast difference in the natures, purposes and usual producers of these goods. These contested goods are not usually sold in close proximity to any of the opponent’s goods, despite the opponent’s arguments and evidence submitted in this regard.

Another part of the abovementioned goods are typewriters and printing blocks. These contested goods are not complementary to the opponent’s paper since consumers do not expect them to originate from the same undertakings, given the clear differences in the manufacturing techniques and equipment required for producing office machines on the one hand, and cellulose products on the other hand.

Another group of the abovementioned contested goods consists in specific stationery items and office requisites, such as decalcomanias and transfers (i.e. transferrable designs), seals and stamps, bookends and bookmarks, paper weights. They serve specific purposes that are far removed from the purposes of the opponent’s goods. These goods are not produced by the same manufacturers, nor are they complementary or in competition. The mere fact that they can all be used in an office environment or as school supplies, is insufficient to lead to the finding of similarity between the goods under Article 8(1)(b) EUTMR.

The last group of the abovementioned contested goods contains works of art, such as etchings and engravings, figurines and statuettes, paintings and pictures, posters and prints. Whilst it is true that the opponent’s goods cover carriers or media for at least some of the contested goods, for example paper, cardboard and paper mache, the degree of transformation that the raw materials have undergone is too significant to lead to the conclusion that there is any similarity between the raw materials (i.e. the opponent’s goods) and the finished goods (i.e. the contested goods). They have different natures, serve completely different purposes and do not share the same producers.

The opponent argues that at least some of the goods are complementary, for example the contested statuettes and sculptures of papier mache and the opponent’s paper mache. However, the Opposition Division notes that raw materials are not complementary to the finished goods, since they do not target the same public, i.e. the raw material is meant for the manufacturer, but not for the consumer of the final product. By definition, complementary goods or services must be capable of being used together, so that goods and services directed at different publics cannot be complementary (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 57-58; 22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48; 26/04/2016, T-21/15, DINO (fig.) / DEVICE OF A DINOSAUR (fig.), EU:T:2016:241, § 22; 15/06/2017, T-457/15, climaVera (fig.) / CLIMAVER DECO, EU:T:2017:391, § 36), even if they are considered mutually indispensable (25/01/2017, T-325/15, Choco Love (fig.) / CHOCOLATE, EU:T:2017:29, § 40, 43, 46).

In relation to the contested parts, fittings and accessories for all the aforesaid goods at the end of specification of the contested goods and insofar as this term relates to the main goods found dissimilar hereinabove, the same conclusions must be drawn. These contested goods are considered dissimilar, as they do not share any relevant criteria.

With respect to the remaining contested goods found dissimilar, and the opponent’s arguments in relation to the term goods made from these materials [paper and cardboard], not included in other classes, as covered by the earlier mark, the following remarks are necessary.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.1 (20/02/2014), the term goods made from these materials [paper and cardboard], not included in other classes does not provide a clear indication of what goods made from paper and cardboard are covered. Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods that cannot be recognised by this meaning without further specification. As a result, whilst the term goods made from these materials [paper and cardboard], not included in other classes simply states what the goods are made of, it does not provide a clear indication of what the goods are. Rather, it covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and, therefore, relate to different market sectors.

It follows that when comparing the opponent’s unclear and imprecise term goods made from these materials [paper and cardboard], not included in other classes with the remaining contested goods, some of which are indeed made from paper or cardboard, they cannot be construed as relating to the same goods when such qualities or methods of use have not been expressly identified in the specification and cannot be understood from its natural and literal meaning. Therefore, while the terms may be compared and be considered to have the same abstract nature insofar as they are goods made from paper and cardboard, they cannot, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, be considered to have the same purpose or methods of use, or to be complementary to each other or in competition. Furthermore, they cannot be considered to target the same relevant public, share the same distribution channels or usually be produced by the same undertakings. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise term goods made from these materials [paper and cardboard], not included in other classes, these goods cannot be considered to share sufficient relevant factors with the remaining contested goods for a finding of any similarity between them. Therefore, they must be considered to be dissimilar.

It is also noted that the remaining contested goods have no commonalities with the opponent’s goods in Class 18. They are clearly different by natures and purposes, in that the opponent’s goods are carriers for personal belongings, school or office material etc. These goods are neither complementary nor in competition and usually do not originate from the same producers. The mere fact that they are bought by the general public and may be found in large stores is insufficient for a finding of any relevant degree of similarity.

The remaining contested goods have no commonalities with the opponent’s services in Class 35 either.

The opponent’s wholesaling and retailing in shops and wholesaling and retailing via global communications networks concerning a range of specific goods are not similar to the remaining contested goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesale is the sale of commodities in quantity, usually for resale. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail and wholesale services, including via communication networks, of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail/wholesale services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods sold at retail/wholesale are the same as already compared above, and found dissimilar to the remaining contested goods.

It remains to be noted that the opponent’s import and export, business management assistance in relation to franchising, advertising; business management; business administration; office functions have no commonalities to the remaining contested goods. Even where import and export services, or business support services can relate to some of the contested goods, this does not lead to the finding that they are similar. There is a fundamental difference in the natures, purposes and usual producers/providers of these goods and services. They are neither complementary nor in competition. Furthermore, they do not satisfy the needs of the same public, since the opponent’s services are directed at business customers seeking assistance in running or improving their business, or performing the day-to-day business operations.

It follows that the contested photographs; typewriters; printers' type; printing blocks; publications; magazines; business magazines; magazine and newspaper sections, supplements and columns; anthologies; booklets; catalogues; maps; leaflets; postcards; postcard books; sheet music; decalcomanias; personal seals; embossing stamps; rubber and plastic stamps; transfers; bookends; bookmarks; letter racks; paper weights; etchings; engravings; figurines, statues, statuettes and sculptures of papier mache; lithographic works of art; paintings (framed or unframed); pictures (framed or unframed); posters (framed or unframed); prints (framed or unframed); photographs (framed or unframed); parts, fittings and accessories for all the aforesaid goods are dissimilar to all of the opponent’s goods and services.

The opponent refers to a previous decision of the Office to support its claim that the goods under comparison are identical or similar. However, the Opposition Division finds that the decision of the Board of Appeal referred to by the opponent (12/07/2016, R 874/2014-5, ‘DIGITAL MUM’ (fig. mark) / ‘mom’) is not applicable to the present case. This is because, whilst some of the goods under comparison in the previous decision were a range of goods that coincide with some of the contested goods here, such as ‘photographs; catalogues, newspapers, periodicals, journals’, they were compared to ‘magazines and printed matter’ covered by the other mark. The opponent’s list of goods in the present case does not contain any goods that are on a par with these and therefore, the opponent’s argument in this regard must be dismissed.

Contested services in Class 35

Before proceeding to the comparison, an interpretation of the opponent’s list of services in Class 35 is required. The punctuation used in the term import and export, business management assistance in relation to franchising, advertising suggests that the business management assistance services relate to both franchising and advertising. Nevertheless, it is more reasonable to interpret the list of these services in a way that contains the term advertising separately, given that it is explicitly mentioned and also considering that the punctuation mark used after the term import and export is a comma instead of a semicolon, whilst the terms import and export on the one hand and business management assistance in relation to franchising on the other hand are not related. It is, therefore, considered that the opponent’s list of services covers advertising services as such.

The contested advertising; business management; business administration; office functions; marketing, promotion and endorsement services; market research services; providing business assistance, advice, and information; provision of advertising, marketing and promotional space on web sites, publications and in other content and media; business and commercial analysis, research and information services; business information directory services; provision of business and commercial information research, advice and assistance relating to goods, services and suppliers of goods and services; compiling and maintaining directories and databases of business, commercial and consumer information relating to goods and services and their suppliers; business introduction services; business agency services for artists, writers, actors, models, performers, photographers and others involved in the business, entertainment, educational, cultural, content, advertising, fashion, media, creative and other industries; dissemination of advertising, marketing, promotion, public relations, endorsement and publicity materials; compilation and transcription of data; compilation of advertisements for use as web pages on the internet; compilation of directories; advertising, marketing and promoting goods and services by distribution and transmission of advertisements including advertisements in the nature of audio, video, text messages and emails via wireless and mobile devices; distribution of samples; shop-window dressing; business information, research, assistance and advice; accountancy services; data-processing services; sorting and editing of information in computer databases; searching for data in computer databases; personnel and human resource services; recruitment services; organisation and management of business incentive and loyalty schemes; administrative processing and organising of mail order services; arranging of business introductions; business research and survey services; business forecasting services; provision of business, clerical and secretarial services; news and current affairs clippings services; provision of business and commercial information research, assistance and advice to prospective purchasers of goods and services; answering and message handling services; managing remote monitoring centres; data management and electronic stocktaking services; providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid are identical to the opponent’s advertising; business management; business administration; office functions, respectively, either because they are identically contained in both lists (e.g. business management; business administration; office functions) or because the opponent’s services include, or overlap with, the contested services (e.g. the contested marketing, promotion and endorsement services are included in, or overlap with, the opponent’s advertising; the contested market research services; providing business assistance, advice, and information are included in the opponent’s business management).

The contested organization of fairs and trade shows for business, advertising and promotion purposes consist of the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. These services are normally provided by specialised companies in their specific field. As such, the contested services are to be considered similar to the opponent’s advertising services since these could be offered to third parties in the form of the organisation, arranging and conducting of an exhibition or trade fair on their behalf (01/12/2014, R 557/2014-2, TRITON WATER (fig.) / TRITON COATINGS TRITON (fig.) et al., § 31).

The contested purchasing services include services when a third party negotiates a deal and acquires goods and services for the benefit of others and gets commission for such services. The opponent’s import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export; they are, therefore, preparatory or ancillary to the commercialisation of goods. The services under comparison are business intermediary services. They can be rendered by the same specialist undertakings with the purpose of helping other businesses to resolve their business-related problems. Both services target the same professional public and can be distributed through the same channels. They are, therefore, similar.

With respect to the contested providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid at the end of the specification of the contested services and insofar as these services concern the abovementioned contested services found identical or similar hereinabove, it is noted that these services are inherent to the main activities that they relate to and, therefore, the same conclusions apply also in relation to them. They must be, therefore, considered identical or similar to the respective services covered by the earlier mark.

Part of the contested services in this class are various retail services.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

 

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as internet shopping (online retail services) and mail order services in Class 35.

 

Here, considering the conclusions reached in the comparison of goods in Class 16 and given that the retail services under comparison, where not identical, concern goods that are commonly retailed together in the same places and they target the same public, the contested retail services, online retail services and mail order services connected with the sale of printed matter, books; retail services, online retail services and mail order services connected with the sale of: office requisites, instructional and teaching materials, wrapping and packaging materials, plastic materials for packaging, gift wrapping, paper and plastic bags; retail services, online retail services and mail order services connected with the sale of: cards, greetings cards, gift tags, calendars, diaries, books, pressure sensitive stickers are identical or similar at least to a low degree to the opponent’s retailing in shops and retailing via global communications networks of paper and cardboard, exercise books, notebooks, folders and writing pads, paper for printing and writing, paper for wrapping foodstuffs, table napkins of paper, markers for writing (stationery), respectively.

Further, considering that clothing and headgear items on the one hand, and bags that include handbags, purses and other fashion accessories on the other hand, are similar goods that usually originate from the same manufacturers, target the same consumers and share the same distribution channels, the contested retail services, online retail services and mail order services connected with the sale of: clothing, headgear, bags are identical or similar to the opponent’s retailing in shops and retailing via global communications networks of bags.

Information, advice and assistance services provided in connection with various forms of retail services are considered to include consumer information services which directly relate to the activities surrounding the actual sale of goods including information about the goods themselves, encouraging a consumer to make a sales transaction with a particular retailer, rather than with a competitor. Such services are often provided by the retailer itself at an information or customer service desk in a retail outlet, or via a dedicated section of an online store, where also the retail services are offered to the same consumer.

Therefore, the contested providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid and insofar as these services relate to the foregoing contested retail services, online retail services and mail order services connected with the sale of a range of specific goods as detailed hereinabove, are found similar to the opponent’s retailing in shops and wholesaling and retailing via global communications networks of paper and cardboard, exercise books, notebooks, folders and writing pads, paper for printing and writing, paper for wrapping foodstuffs, table napkins of paper, markers for writing (stationery), bags.

When comparing retail services of specific goods to retail services of other specific goods, similarity is, in principle, excluded where the goods concerned are not commonly retailed together and target different publics, or are dissimilar. Nevertheless, a degree of similarity may still be found if, because of the particularities of the market, such dissimilar goods are retailed together in the same outlets and target the same public.

Here, the remaining contested retail services connected with the sale of audio, visual and audio visual recordings, and printed and downloadable content including in relation to business, entertainment and education; retail services online retail services and mail order services connected with the sale of computer hardware, software and firmware; retail services online retail services and mail order services connected with the sale of music, films, videos, film clips, music clips, photographs and texts; retail services, online retail services and mail order services connected with the sale of software, games, electronic games, publications, non-printed publications, magazines, publicity documents, entertainment and educational documents, television and radio programmes, broadcasts and podcasts; retail services, online retail services and mail order services connected with the sale of: office machinery, instructional and teaching apparatus, prints, and posters; retail services, online retail services and mail order services connected with the sale of: pamphlets, manuals, magazines, periodical publications, newspapers, newsletters, book covers and book marks; retail services, online retail services and mail order services connected with the sale of: games, toys and playthings; providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid are dissimilar to the opponent’s retailing services, as the goods involved in the retail services under comparison are not commonly sold together and they target different publics, in the sense that the services satisfy different needs of the consumers.

The other goods or services covered by the earlier mark are not similar to the abovementioned contested services either, since they show even fewer relevant criteria in common, if any at all.

The contested auctioneering services refer to public sales at which goods are sold to the highest bidder. These services have no relevant commonalities with any of the opponent’s services in Class 35, because auctioneering services are rendered by auction houses and other undertakings specialising in this area, and they are not usually involved in the provision of business management assistance, advertising, business administration or clerical functions for third parties. With respect to the opponent’s wholesaling and retailing services, it is noted that similarity between auctioneering services and the retail/wholesale of specific products will only be found insofar as the retail/wholesale services relate to goods that are commonly sold at auctions, such as objects of art. Here, the specific wholesaling and retailing services of the opponent are considered dissimilar to the contested auctioneering services, since it is not common, on the market, for cellulose products, bags and luggage etc. to be sold to the highest bidder. Nor are any of the opponent’s goods in Classes 16 and 18 similar to the contested auctioneering services, as they have no relevant criteria in common.

The contested advice, assistance, information, analysis and consultation services in the field of auctioneering; providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid and insofar as they relate to auctioneering services, since these services are inherent to the main activity found dissimilar to the opponent’s goods and services, the same finding of dissimilarity applies also in relation to these services.

It follows that the contested retail services connected with the sale of audio, visual and audio visual recordings, and printed and downloadable content including in relation to business, entertainment and education; retail services, online retail services and mail order services connected with the sale of computer hardware, software and firmware; retail services online retail services and mail order services connected with the sale of music, films, videos, film clips, music clips, photographs and texts; retail services, online retail services and mail order services connected with the sale of software, games, electronic games, publications, non-printed publications, magazines, publicity documents, entertainment and educational documents, television and radio programmes, broadcasts and podcasts; retail services, online retail services and mail order services connected with the sale of: office machinery, instructional and teaching apparatus, prints, and posters; retail services, online retail services and mail order services connected with the sale of: pamphlets, manuals, magazines, periodical publications, newspapers, newsletters, book covers and book marks; retail services, online retail services and mail order services connected with the sale of: games, toys and playthings; auctioneering services; advice, assistance, information, analysis and consultation services in the field of auctioneering; providing business/ commercial information via web sites and web pages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid are dissimilar to all of the opponent’s goods and services.

 

 

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 found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The opponent argues that, as regards the relevant public’s level of attention, it is clear from case-law that, where it is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account.

 

However, the Opposition Division finds that the relevant public’s degree of attention varies from low to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. For example, some of the relevant goods in Class 16 are directed at the public at large. Goods such as plain stationery items are cheap and purchased frequently. In relation to those goods, the habitual buying behavior of the public can result in a low degree of attention. However, some of the relevant services in Class 35 are exclusively directed at professionals whose sophistication and purchase involvement in relation to business support services, such as advertising, business management and business administration, as well as their degree of attention is high. For the rest of the goods and services at issue, the degree of attention is considered to be average, despite the opponent’s arguments that the degree of attention of the relevant public is low for all of the goods and services, on account of their widespread use.

c) The signs

 

	SUBSCRIBED
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 earlier mark features the verbal element ‘Scribe’ which is meaningful in certain language areas. For example, in English, this word refers to, inter alia, a person who copies documents, especially a person who made handwritten copies before the invention of printing, and a clerk or public copyist. The same or similar meanings related to writing, especially by hand, are likely to be perceived also in the Romance language areas, for example, in French, the word exists as such, and in Spanish, there are some words with the same stem, such as ‘escribe’ or ‘escribir’ (to write). For the part of the relevant public that perceives a concept in the word ‘Scribe’, it is vaguely allusive to the abstract idea of some of the opponent’s goods and services that are related to stationery. Nevertheless, that does not affect the term’s distinctiveness and it is considered average. This is due to the fact that the concepts conveyed are fanciful in relation to the goods and services at issue.

The contested sign is the word ‘SUBSCRIBED’. For part of the public in the relevant territory, such as the English-speaking consumers, the word points to the idea of, inter alia, the paying of a sum of money as a contribution to a fund or charity, for a magazine, etc. especially at regular intervals. It can also be associated to the idea of having signed a contract or other document, or to having given support or approval. Whilst some of the relevant goods and services may be received ‘on subscription’, the fact remains that, in English, the word ‘SUBSCRIBED’ is not used in this sense. Therefore, whilst the term is allusive in relation to some of the goods and services at issue, in English its distinctiveness is not substantially affected and is considered normal. The same or similar meanings related to signing or subscribing may be perceived also in some of the Romance languages. For example, in Spanish, besides ‘suscribir’, there is also the word ‘subscribir’ having the same stem and prefix. However, considering that the term in the sign features a variation of the grammatically correct form of the word, and since the meanings are sufficiently far removed from any objective or desirable characteristics of the goods and services at issue, the degree of distinctiveness of the word ‘SUBSCRIBED’ is considered average.

For the remaining part of the relevant public in the pertinent territory, such as a non-negligible part of the consumers in the Slavic and Baltic language areas, the words ‘Scribe’ and ‘SUBSCRIBED’ both are meaningless and also distinctive to an average degree. For example, in French, it is unlikely that the public would perceive any clear semantic content in the contested sign, as the closest equivalent terms are the verb ‘souscrire’ and its past participle form, ‘souscrit’.

The Opposition Division accepts the opponent’s argument that the figurative element of the earlier mark is purely decorative and devoid of distinctive character. The stylisation of the word ‘Scribe’ in the earlier mark is almost imperceptible, since it is limited to a very slightly stylised font that does not depart far from a standard typeface. Therefore, the figurative aspects of the earlier mark have a low impact on the comparison. However, it should be noted that the earlier mark is not considered to have a dominant (visually more outstanding) element, because the word ‘Scribe’ and the red shape carrying the verbal element are equally eye-catching in the overall impression produced by the mark.

Visually, the signs coincide in the letters ‘SCRIBE’, albeit depicted in a slightly stylised manner in the earlier mark.

The opponent argues that, according to settled case-law, marks containing or reproducing an element of the other must be considered, at least to that extent, similar, and invokes numerous judgments of the General Court. Although it cannot be denied that, in the present case, all of the letters forming the verbal element of the earlier mark are included in the contested sign, it cannot be left out of sight that this coincidence would not be readily perceived in the contested sign. This is due to the fact that the word ‘SUBSCRIBED’ contains additional letters in its initial part, namely ‘SUB’. In this regard, it must be recalled that 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. It must be also noted that the contested sign contains an additional letter at its ending, namely ‘D’, which makes it even more unlikely that the coinciding letter string, ‘SCRIBE’, would be identified in the contested sign.

It is important in the present comparison that the letter string, ‘SCRIBE’, is not visually separated from the additional letters in the contested sign. To uphold the opponent’s argument that the signs are highly similar on account of the earlier mark’s verbal element being entirely included in the contested sign would mean to artificially dissect the contested sign, which is highly unlikely, since the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details.

Therefore, and whilst considering the limited impact that the figurative aspects of the earlier mark have on the public’s perception of the mark as a whole, signs are visually similar to a low degree.

 

Aurally, the pronunciations of the signs coincide in the sound of the letters ‛SCRIB’ and potentially also in the sound corresponding to the letter ‘E’, if not silent. Nevertheless, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the contested sign differs in its first syllable, namely the sounds of the letters ‘SUB’, and also the sound of the last letter, ‘D’, although the latter is a consonant that may not result in a major aural difference.

Along similar line of reasoning as given above in relation to the visual comparison of the signs, and particularly since the shared letter string would not be artificially dissected when enunciating the contested sign, it is considered that the signs are aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for part of the relevant public. The mere fact that the concepts conveyed by the signs are related in the sense of alluding to the general notion of writing does not lead to the finding of any conceptual similarity. The addition of the prefix ‘SUB’ to the word ‘SCRIBE’ forms a new concept that cannot be considered a close variation of the main term. There is no reason to consider that the prefix ‘SUB’ is less distinctive, either. On the contrary, in the present case it is pivotal that the signs will be associated with meanings that are indeed different. The signs are, therefore, conceptually dissimilar for the part of the public that perceives a meaning in both of them.

Where the public only perceives a meaning in one of the signs, they are not conceptually similar.

For the remaining part of the relevant public, neither of the signs has a meaning. Since to that extent a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 clear meaning for any of the goods and 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 non-distinctive figurative element in the mark, as stated above in section c) of this decision.

 

 

e) Global assessment, other arguments and conclusion

From the outset, it should be noted that part of the contested goods and services are dissimilar, as concluded in section a) of this decision. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The rest of the contested goods and services are partly identical or similar, to varying degrees, to some of the opponent’s goods and services. They are directed at the public at large and business customers whose attentiveness in relation to the purchases in question is considered to vary from low, to average, and even high. The degree of inherent distinctiveness of the earlier mark is average which affords it a normal scope of protection.

Nevertheless, the similarity between the signs is low on the visual and aural levels. From the conceptual perspective, the signs are either dissimilar/not similar for part of the public which perceives a semantic content in both of the signs or only one of them, or conceptually neutral otherwise, as set out in detail in section c) of this decision.

The opponent argues that given the similarity between the goods and services and the fact that the earlier mark is included in the contested sign, consumers may associate both signs with a unique business origin. According to the opponent, it is probable that consumers will perceive the contested sign as a sub-brand or variation of the earlier mark. Furthermore, the opponent argues that the average consumer only rarely has the chance to make a direct comparison between different marks and must place trust in the imperfect recollection of them, including where the public’s degree of attention is high. Lastly, the opponent invokes the interdependence principle according to which a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa.

The Opposition Division acknowledges the opponent’s arguments and the general principles stemming from settled case-law. However, they do not seem applicable in the present case.

It is useful to distinguish two scenarios for the global assessment of likelihood of confusion.

First, part of the public which perceives the earlier mark as meaningful, is unlikely to attach much weight to the fact that the signs are visually and aurally similar to a low degree, due to the semantic content that results in the signs being either conceptually not similar or even dissimilar. On the contrary, the conceptual difference is likely to eclipse the tenuous visual and aural similarities between the signs. Since there is no independent distinctive element in the contested sign that would be sufficiently similar to the earlier mark in order to help the relevant public to associate the signs with each, the opponent’s sub-brand argument does not apply here. Furthermore, having considered the interdependency principle, the Opposition Division does not find it plausible that the relevant public would expect that the goods and services bearing the conflicting signs originate from the same, or economically related, undertakings, notwithstanding the fact that some of the goods and services at issue are indeed identical or similar to a high or average degree. This is because the feeble similarity between the signs on the visual and aural levels is not counteracted by any other relevant factor in the present case.

Second, for the remaining part of the public which perceives the signs as conceptually neutral, the similarity between the signs is a mere coincidence in a string of letters, despite the fact that the entirety of the earlier mark’s verbal element is included in the contested sign. There is no reason as to why this part of the relevant public would artificially dissect the contested sign in order to discern the earlier mark’s verbal element, ‘Scribe’, in the word ‘SUBSCRIBED’ at all. Nor would the public overlook the differences between the signs that are immediately perceptible on the visual and aural levels and, therefore, the opponent’s argument of imperfect recollection, albeit duly considered, does not change the outcome of the assessment.

The opponent also refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decision of the Board of Appeal referred to by the opponent (13/11/2013, R 158/2013-5, ‘avenir’ (fig. mark) / ‘MUTUAVENIR’ (fig mark) et al.) is not relevant to the present proceedings. Unlike in the previous case where the differences between the signs resided in secondary or less distinctive verbal and graphic elements, the differences identified between the signs here are neither less distinctive nor secondary otherwise.

Considering all the foregoing, the opponent’s arguments must be set aside.

The Opposition Division concludes that there is no likelihood of confusion on the part of the public. Nor is it likely that the relevant public believes that the goods and services, albeit identical or similar to varying degrees and marketed under the signs in dispute come from the same undertaking or, as the case may be, from economically linked undertakings.

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, 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

 

 

María Victoria DAFAUCE MENÉNDEZ

Solveiga BIEZA

Martin MITURA

 

 

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.