OPPOSITION No B 3 054 361

Schweizerische Vereinigung für Qualitäts- und Management-Systeme (SQS), Bernstrasse 103, Postfach, 3052, Zollikofen, Switzerland (opponent), represented by Schneiders & Behrendt Partmbb, Rechts- Und Patentanwälte, Huestr. 23, 44787 Bochum, Germany (professional representative)

a g a i n s t

Dariusz Kańka, ul. Szkolna 35, 32-083 Balice, Poland and Michał Roś, ul. Stawowa 141/14, Krakow, Poland (applicants), represented by Lucyna Łuczak-Noworolnik, Stanisława Taczaka 23/2, 61-819 Poznań, Poland (professional representative).

On 18/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 361 is upheld for all the contested services.

2. European Union trade mark application No 17 762 221 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 762 221 . The opposition is based on international trade mark registration No 631 738 designating Austria, Benelux, Bulgaria, Croatia, Czech Republic, France, Germany, Hungary, Italy, Poland, Portugal, Romania, Slovenia, Slovakia Spain, and the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

In the notice of opposition, submitted on 08/06/2018, the opponent indicated as basis of opposition the international trade mark registration No 631 738 designating Benelux, Germany, Spain, France, Italy, Austria and Portugal. In a separate communication, submitted by the opponent on the same day, it requested to also include, as basis of opposition, the subsequent designations of the abovementioned international registration to the following contracting parties: Bulgaria, Croatia, Czech Republic, Hungary, Poland, Romania, Slovenia, Slovakia and the European Union.

According to Article 2(2)(b) EUTMDR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely: where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is an EUTM.

According to Article 5(3) EUTMDR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Article 2(2)(b) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

In the present case, the abovementioned request was filed by the opponent on 08/06/2018, that is, on the same day as the notice of the opposition and within the opposition period. Therefore, the request is to be taken into account and the opposition is considered to be based on international registration No 631 738 designating Benelux, Bulgaria, Czech Republic, Germany, Spain, France, Croatia, Italy, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the European Union.

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.

The opposition is based on an international registration designating more than one contracting party. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international registration No 631 738 designating the European Union.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 35: Advertising; business management, business administration; office functions; none of the aforesaid services relating or being in the field of construction services, excavation services, highway maintenance and reinstatement services.

Class 42: Services for providing food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research, computer programming; carrying out compliance reviews, audits and quality certifications for management systems in service and production companies of all types; none of the aforesaid services relating or being in the field of construction services, excavation services, highway maintenance and reinstatement services.

The contested services are the following:

Class 35: Job matching services; temporary personnel services; personnel recruitment services and employment agencies; personnel recruitment agency services; employment agencies.

Class 42: Inspection of plant and machinery; quality control of manufactured goods; quality control; quality control for others; quality checking and testing; material testing; process monitoring for quality assurance; technical supervision and inspection; quality assessment; product quality evaluation.

Contested services in Class 35

The contested job matching services; temporary personnel services; personnel recruitment services and employment agencies; personnel recruitment agency services; employment agencies are included in, or overlap with the opponent’s business administration; none of the aforesaid services relating or being in the field of construction services, excavation services, highway maintenance and reinstatement services. Therefore, they are identical.

Contested services in Class 42

The contested inspection of plant and machinery; quality control of manufactured goods; quality control; quality control for others; quality checking and testing; material testing; process monitoring for quality assurance; technical supervision and inspection; quality assessment; product quality evaluation are services aimed at ensuring the maintenance of proper standards, providing periodic inspection and verifying that a product or process works as expected. These services have some relevant points in common with the opponent’s carrying out compliance reviews, audits and quality certifications for management systems in service and production companies of all types; none of the aforesaid services relating or being in the field of construction services, excavation services, highway maintenance and reinstatement services as they have the same nature and purpose. They may target the same end users, be offered by the same provider and distributed using the same channels. Therefore, they are at least similar.

2. 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 found to be identical and at least similar are directed at business customers with specific professional knowledge or expertise, who will use these services to support their commercial activities or in the course of their business. The relevant public’s degree of attention will be relatively high when choosing them as the relevant services in Class 35 and Class 42 may have consequences for the functioning of a business, are quite expensive, and are not contracted on a daily basis.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of the three letters ‘SQS’, written in slightly stylised upper-case letters.

The contested sign is a figurative mark composed of two verbal elements: three bold letters, ‘SQS’, and below them the word ‘SOLUTIONS’ in a smaller typeface. Both these verbal elements are written in standard upper-case letters. These elements are preceded by a device element depicting multiple rounded lines forming a circle interrupted at three points.

The coinciding letters ‘SQS’ have no meaning for the relevant public and are therefore distinctive to an average degree. The same applies to the figurative element of the contested sign, which does not convey any particular meaning in relation to the services in question. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The element ‘SOLUTIONS’, present in the contested sign, is plural from of ‘SOLUTION’ understood by at least part of the relevant public (e.g. the English-speaking part) as ‘a means of solving a problem or dealing with a difficult situation’ (information extracted from Oxford Dictionary on 10/07/2019 at https://www.lexico.com/). For this part of the public the word ‘SOLUTIONS’ is non-distinctive, as it will be seen as referring to the intended purpose of the services in question, namely that they are aimed to offering solutions in the relevant fields. Taking into account its smaller size, the word ‘SOLUTIONS’ will not be attributed much trade mark significance, even if perceived as meaningless.

Due to their sizes and positions, the letters ‘SQS’ and the device element of the contested sign clearly stand out in the overall composition and are therefore considered the co-dominant (most eye-catching) elements of the mark.

Visually, the signs coincide in the distinctive element ‘SQS’, which is the sole element of the earlier mark and a co-dominant element in the contested sign. The signs differ in the secondary element ‘SOLUTIONS’, which has no counterpart in the earlier mark. The signs also differ in the distinctive figurative element of the contested sign and in the stylisation of both marks which, however, will have less impact for the abovementioned reasons.

As the earlier mark is entirely included in the co-dominant and distinctive element of the contested sign, the slight differences in stylisation, as well as the addition of the secondary (and non-distinctive for at least part of the public) verbal element and the figurative element in the contested sign, will not create significant visual differences between the marks under comparison. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive letters ‛SQS’, present identically in both signs. The pronunciation differs in the sound of the secondary element ‛SOLUTIONS’ of the contested mark, which has no counterpart in the earlier sign. The figurative element of the contested sign will not be perceived aurally by the relevant consumers.

Considering that the distinctive and co-dominant verbal element of the contested sign will be pronounced identically to the earlier mark and that the non-distinctive (for at least part of the public) verbal element of the contested sign ‘SOLUTIONS’, due to its subordinate nature, may not even be pronounced by the relevant consumers, the signs are aurally highly similar.

Conceptually, as described above, the verbal element, ‘SQS’, present in both signs, does not convey any specific meaning. Therefore, a conceptual comparison is not possible between these elements. The verbal element ‘SOLUTIONS’ of the contested sign may be perceived as meaningless or meaningful depending on the public. However, as this element, when perceived as meaningful, is non-distinctive and cannot indicate the commercial origin, it is not able on its own to create any conceptual difference between the signs. It follows that 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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested services are identical or at least similar to the opponent’s services and they are directed at business customers. The degree of attention is relatively high.

As detailed in section c), the signs are visually similar to an average degree, aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark and the contested sign coincide in the distinctive verbal element ‘SQS’, which is the only verbal element of the earlier mark and the co-dominant distinctive element of the contested sign. The differences between the signs are confined to their stylisations and to the additional elements of the contested sign, one of which (the figurative element) has less impact on the relevant consumers than the element ‘SQS’ (as explained above). The verbal element, ‘SOLUTIONS’, is secondary or even non-distinctive depending on the relevant public’s perception. Consequently, these differences are clearly insufficient to distract the consumers’ attention from the fact that the sole verbal element of the earlier mark, ‘SQS’, is totally included, as a co-dominant and distinctive element, in the contested sign.

Therefore, it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the services in question come from the same undertaking or, as the case may be, from economically linked undertakings. Therefore, it cannot be safely excluded that the relevant consumers will confuse the marks or, alternatively, perceive the contested sign as a variation or a later version of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), configured in a slightly differing way depending on the services offered.

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 international trade mark registration No 631 738 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier opponent’s international trade mark registration No 631 738, designating the European Union, leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the opposition in relation to other designations of the said international registration invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicants are the losing parties, they 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

Rasa BARAKAUSKIENE

Birgit FILTENBORG

Erkki MÜNTER

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.