OPPOSITION No B 3 049 079

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 Oficina de Propiedad Industrial Gil Vega, C/ Toledo 153, Esc. 4, B-2, 28005 Madrid, Spain (professional representative)

a g a i n s t

Ptm Consulting S.R.L., Piazza IV Novembre 6, 42049 Sant’Ilario d’Enza, Italy (applicant), represented by Bugnion S.p.A., Largo Michele Novaro 1/A, 43121 Parma, Italy (professional representative).

On 21/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 079 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 17 613 721 for the word mark ‘CYMAPP’ namely against all the services in Class 42. The opposition is based on Spanish trade mark registration No 3 094 266 for the word mark ‘CIGMAP - CENTRO INTERNACIONAL DE GOBIERNO Y MARKETING POLITICO’. 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 42: Research services.

The contested services are the following:

Class 42: Cartography services; research relating to the computerised automation of technical processes; research relating to the computerised automation of industrial processes; research relating to the computerised automation of administrative processes; consultancy services relating to quality control; testing, authentication and quality control; quality control relating to computer software; process monitoring for quality assurance; computer project management services; design of information systems relating to management; programming of software for database management; programming of software for importing and managing data; design and development of software for importing and managing data; design and development of computer software for logistics, supply chain management and e-business portals; creation of computer programmes for data processing; design services for data processing systems; engineering services relating to data processing; design and development of data processing software; technical advisory services relating to data processing; industrial testing; computer system monitoring services; services for monitoring industrial processes; design planning; industrial design; industrial engineering design services.

Some of the contested 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 services listed above. The examination of the opposition will proceed as if all the contested 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 services presumed to be identical are directed at business customers with specific professional knowledge or expertise.

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

c) The signs

CIGMAP - CENTRO INTERNACIONAL DE GOBIERNO Y MARKETING POLITICO	CYMAPP
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is a word mark composed of the expression ‘Centro Internacional de Gobierno y Marketing Politico’ (which in English means ‘International Centre for Government and Political Marketing’), and its acronym ‘CIGMAP’. The expression itself solely refers to the nature of the services rendered, namely research in the field of political science with a special focus on governance and political marketing. Therefore, this word combination is non-distinctive.

The verbal element ‘CIGMAP’ included in the contested sign will not be perceived by the public independently of the other verbal elements of the sign. As it precedes the word combination ‘Centro Internacional de Gobierno y Marketing Politico’ it will be regarded merely as an acronym of that combination. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, C‑90/11 & C‑91/11, Natur-Aktien-Index / Multi Markets Fund, EU:C:2012:147, § 32, 34 and 40). Therefore, the distinctiveness of this element is closely linked to the distinctiveness of the word combination it precedes and is at most weak.

The contested mark is meaningless for the relevant public and therefore distinctive.

Visually, the signs coincide in the sequence of letters ‘C*(*)MAP(*)’, that is four out of six letters of both the contested sign and the first verbal element of the earlier mark. However, only the first and sixth letters are placed in the same positions in both marks. Moreover, the second and the third letters of the earlier mark, that is the letters ‘IG’, have no counterparts in the contested mark. Likewise, the second letter, a ‘Y’, and one of the letters ‘P’ of the contested sign have no counterparts in the earlier mark. The additional verbal element ‘CENTRO INTERNACIONAL DE GOBIERNO Y MARKETING POLITICO’ of the earlier mark further differentiates the marks. Even though it is non-distinctive, it still has an impact on the visual perception of the mark, as it takes up much more space than the first element of the mark (it adds 50 additional characters to the mark).

Although the contested mark has some points in common with the first element of the earlier mark, the similarities between the signs are not sufficient to argue that the marks have similar beginnings. In the contested sign the differing, second letter, a ‘Y’, is visually striking at first glance, significantly influencing the perception of the beginning of the mark. In fact, the beginnings of the signs are visually different overall (‘CIG’ v ‘CYM’).

Furthermore, although a faint degree of similarity between the signs cannot be denied (due to the common sequence of letters ‘MAP’), the difference at the end of the contested sign will be easily spotted. The unusual repetition of the consonants ‘PP’ will definitely catch the consumer’s attention and due to this will most probably be remembered.

Therefore, taking all the above into consideration, the Opposition Division finds the marks visually similar only to at most a very low degree.

Aurally, the marks coincide in the sound of the letters ‘C(I/Y)(*)MAP’, they differ in the sound of the letter ‘G’ in the first element of the earlier mark and in the following expression ‘CENTRO INTERNACIONAL DE GOBIERNO Y MARKETING POLITICO’. Taking into account that marks which include several words might be abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370), the earlier mark is likely to be referred to, at least by part of the public, only by its first element ‘CIGMAP’. Even so, the aural similarity between the signs is still at most below average.

This is because the letter ‘G’ in the earlier sign significantly influences the pronunciation of the sign and differentiates the rhythm and intonation of this mark when compared to the contested sign. This consonant has a very strong sound, resembling the sound of the English letter ‘H’, therefore, it naturally splits the mark phonetically in two parts. This will create a significant and clearly perceivable difference between the signs.

Conceptually, neither of the signs has a meaning as a whole. Although the expression ‘CENTRO INTERNACIONAL DE GOBIERNO Y MARKETING POLITICO’ will evoke a concept, this concept, as explained above, is non-distinctive and cannot indicate the commercial origin of the services. Therefore, the attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the services in question.

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, § 23).

The 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 services are presumed to be identical. The relevant public is professionals whose attention varies from average to high. The signs are visually similar to at most a very low degree and aurally similar to a below average degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

The similarity between the marks is very faint. The fact that the signs have some letters in common is not sufficient for a finding of similarity resulting in confusion of the public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some letters, but they cannot for that reason alone be regarded as similar. In this case, the beginnings of the marks are visually significantly different and the earlier sign is much longer, consisting of over nine times the number of characters as the contested sign. Moreover, phonetically, the letter ‘G’, which differentiates the signs, is the one that attracts most attention in the first element of the earlier sign (where the faint similarities reside). The lack of this sound in the contested sign is clearly perceivable. Therefore, considering that the public is professional business consumers who are reasonably attentive the Opposition Division finds that the signs differ sufficiently to exclude any likelihood of confusion between the marks, even assuming that the services are identical.

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.

The Opposition Division

Tu Nhi VAN

Marta Maria CHYLIŃSKA

Sofia SACRISTAN MARTINEZ

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.