OPPOSITION No B 3 047 081

IMMAC Holding AG, Große Theaterstraße 31-35, 20354 Hamburg, Germany (opponent), represented by Rae V. Lindeiner PP., van-der-Smissen-Straße 2, 22767 Hamburg, Germany (professional representative)

a g a i n s t

IMMA Holding, 490 rue du Vouet, 38510 Morestel, France (applicant), represented by Laurent Fournier, 73 Rue de Courcelles, 75008 Paris, France (professional representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 081 is upheld for all the contested services, namely

Class 35: Business management and organization consultancy; Project studies for businesses; Business efficiency expert services.

2. European Union trade mark application No 17 602 509 is rejected for all the contested services. It may proceed for the remaining non-contested goods and services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 602 509 for the figurative mark , namely against some of the services in Class 35. The opposition is based on German trade mark registration No 302 009 043 939 for the word mark ‘IMMAC’. 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 35: Business administration; business management.

The contested services are the following:

Class 35: Business management and organization consultancy; Project studies for businesses; Business efficiency expert services.

Business management is identically contained in both lists.

The contested organization consultancy; project studies for businesses; business efficiency expert services are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

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.

The services found to be identical are directed at the professional public with specific professional knowledge or expertise. The public’s degree of attentiveness is rather high depending on the price, specialised nature (as they might have an important impact on the functioning of a business), or terms and conditions of the services purchased.

c) The signs

IMMAC
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘IMMAC’. The contested sign is a figurative sign composed of the verbal elements ‘IMMA’ and ‘chart’, and a figurative element depicting a three-dimensional structure. The verbal element ‘IMMA’ appears above the other verbal element and is depicted in bold upper-case. The word ‘chart’ is written in bold lower-case. The contested sign’s figurative element and its verbal element ‘chart’ are brown, and the verbal element ‘IMMA’ is willow green.

The element ‘IMMAC’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘IMMA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The element ‘chart’ of the contested sign is used in the German language and will be understood as ‘a diagram, picture, or graph which is intended to make information easier to understand’. Bearing in mind that the relevant services are business management services, this element is non-distinctive for these services. The figurative element has no meaning for the services in question and is, therefore, distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

The stylisation of the verbal elements in the contested sign is rather decorative and plays a secondary role in the comparison. Moreover, when signs consist of both verbal and figurative components, 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; 19/12/2011, R 233/2011‑4 BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK.), § 59).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from top to bottom and left to right, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader. This is even more relevant in the current case as the distinctive verbal element in the contested sign is depicted in bold and above the non-distinctive verbal element.

Visually, the signs coincide in the letters ‘IMMA’. However, the distinctive verbal elements ‘IMMAC’ and ‘IMMA’ differ in the last letter ‘C’ of the earlier mark. They also differ in the figurative elements of the contested sign which have a more limited impact than the verbal elements as explained above and an additional verbal element, which is, as stated above, non-distinctive.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IMMA’, present identically in both signs. The pronunciation differs in the sound of the letter ‘C’ which is the last letter of the distinctive verbal element ‘IMMAC’ of the earlier mark. The signs differ also in the non-distinctive word element of the contested sign, that is, ‘chart’, which is not likely to be pronounced, or will have a very limited impact, due to its non-distinctive character.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested services are identical and they target professionals, whose degree of attention is rather high. The signs are visually and aurally similar to a high degree and not conceptually similar. Furthermore, the earlier mark has an average degree of inherent distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The sole verbal element in the earlier mark and the most distinctive and initial verbal element of the contested sign, namely ‘IMMAC’ and ‘IMMA’, are highly similar as they differ only in one additional letter at the end of the earlier mark. As stated above, beginnings are more memorable to the public. The differences between the signs are not sufficient to counterbalance the overall similar impression of the signs.

In its observations, the applicant argues that it owns several registered marks with the word ‘IMMA’ in the European Union and in France, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the Office concerning relative grounds for refusal, the applicant duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Furthermore, the applicant stresses that the opponent is only ‘active in Germany and Ireland’. How and where the services of the opponent are rendered is irrelevant, as the Opposition Division focuses on the comparison of the goods/services and the comparison of signs in the opposition proceeding. Therefore, this claim of the applicant must be set aside.

The applicant further argued that its EUTM has a reputation and filed various items of evidence to substantiate this claim. The right to an EUTM begins on the date when the EUTM is filed and not before. From that date the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 009 043 939. It follows that the contested trade mark must be rejected for all the contested services.

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

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Michal KRUK

Marzena MACIAK

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.