OPPOSITION No B 3 049 826

Centro de Enseñanza Universitaria Sek, S.A., Castillo de Alarcón, 49, Urb. Villafranca del Castillo, 28692 Villanueva de la Cañada (Madrid), Spain (opponent), represented by Pablo Aznárez Urbieta, C/ Brillante 33, 28260 Galapagar (Madrid), Spain (professional representative)

a g a i n s t

Hyve Group plc, 2 Kingdom Street, W2 6JG London, United Kingdom (applicant), represented by CSY London, 10 Fetter Lane, EC4A 1BR London, United Kingdom (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 826 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 17 576 612 the figurative sign , namely against all the services in Class 35 and 41. The opposition is based on Spanish trade mark registration No 3 676 756 for the figurative sign (registered for services in Class 41). 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 services

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

Class 41: Education; training; entertainment services; sports' and cultural activities.

The contested services, after the limitation requested by the applicant (e.g. modification of Class 35 and deletion of Class 41), are the following:

Class 35: Organization, arranging and conducting of trade fairs for commercial, promotional and advertising purposes; provision of incentive schemes in relation to trade fairs for commercial, promotional and advertising purposes; advertising, publicity, marketing and promotional services within or in relation to trade fairs for commercial, promotional and advertising purposes; public relations services relating to trade fairs for commercial, promotional and advertising purposes; direct mail advertising (dissemination of advertising matter) in relation to trade fairs for commercial, promotional and advertising purposes; rental of advertising space in relation to trade fairs; rental of booths, stands and areas for trade fairs for commercial, promotional and adverting purposes; organization and conducting of business meetings, business networking and business introductory services as part of trade fairs for commercial, promotional and advertising purposes; arranging contacts between commercial partners in trade and industry, also via the Internet, within trade fairs for commercial, promotional and advertising purposes; presentation of business organizations and their products and services, also via the Internet, as part of trade fairs; sales promotion for others within trade fairs; demonstration of goods and services for commercial or advertising purposes as part of trade fairs; providing information and advice in commercial matters within trade fairs; information and advisory services relating to all the aforegoing, including all such services provided on-line; all in relation to trade fairs for commercial, promotional and advertising purposes.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested services, namely organization, arranging and conducting of trade fairs for commercial, promotional and advertising purposes; provision of incentive schemes in relation to trade fairs for commercial, promotional and advertising purposes; advertising, publicity, marketing and promotional services within or in relation to trade fairs for commercial, promotional and advertising purposes; public relations services relating to trade fairs for commercial, promotional and advertising purposes; direct mail advertising (dissemination of advertising matter) in relation to trade fairs for commercial, promotional and advertising purposes; rental of advertising space in relation to trade fairs; rental of booths, stands and areas for trade fairs for commercial, promotional and adverting purposes; organization and conducting of business meetings, business networking and business introductory services as part of trade fairs for commercial, promotional and advertising purposes; arranging contacts between commercial partners in trade and industry, also via the Internet, within trade fairs for commercial, promotional and advertising purposes; presentation of business organizations and their products and services, also via the Internet, as part of trade fairs; sales promotion for others within trade fairs; demonstration of goods and services for commercial or advertising purposes as part of trade fairs; providing information and advice in commercial matters within trade fairs; information and advisory services relating to all the aforegoing, including all such services provided on-line; all in relation to trade fairs for commercial, promotional and advertising purposes, are all services related to advertising, publicity, marketing or promotion activities, all in relation to trade fairs.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

It should be explained that education is the process of facilitating learning, or the acquisition of knowledge, skills, values, beliefs, and habits, and, likewise, training is the process of teaching, or developing in oneself or others, any skills and knowledge or fitness that relate to specific useful competencies. Furthermore, entertainment is a form of activity that holds the attention and interest of an audience or gives pleasure and delight. The latter covers, inter alia, sports' activities, namely all forms of usually competitive physical activity which, through casual or organised participation, aim to use, maintain or improve physical ability and skills while providing entertainment to participants, and in some cases, spectators, and cultural activities, that is, activities that embody or convey cultural expressions, irrespective of the commercial value they may have, also with the aim to provide entertainment to participants.

Therefore, the contested services are dissimilar to the opponent’s services, namely education; training; entertainment services; sports' and cultural activities. They have no point in common. They differ not only in their nature and purpose, but also in their distribution channels, providers, method of use and public. Furthermore, they are in competition.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Helen Louise MOSBACK

Michal KRUK

Vít MAHELKA

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.