OPPOSITION No B 3 057 619

Euroleague Properties, S.A., 72 Grand-Rue, Luxembourg, Netherlands (opponent), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Oneteam, 81 Allee Georges Aksinazi, 92100 Boulogne-Billancourt, France (applicant), represented by Tesla, 250 rue Saint Jacques, 75005 Paris, France (professional representative).

On 13/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 619 is partially upheld, namely for the following contested services:

Class 41: Providing of training; Occupationally orientated instruction; Training; Personnel training; Publication of the editorial content of sites accessible via a global computer network; Multimedia publishing of electronic publications; Publishing of documents; Publishing by electronic means; Arranging of conferences; Organisation of meetings and conferences; Arranging, conducting and organisation of conferences; Arranging and conducting conferences and seminars.

2. European Union trade mark application No 17 851 817 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 851 817 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 518 362 for the 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 services

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

Class 41: Teaching services related to pedagogical techniques and methods; organisation of courses, workshops, seminars, congresses, conferences, exhibitions, as well as cultural and sporting events; publication of texts (other than publicity texts), on paper and on-line; information services in relation with the aforesaid activities.

Class 45: Legal and mediation services; child fostering services; fostering services for sporting purposes.

The contested services are the following:

Class 35: Business management for freelance service providers; Online advertisements; On-line advertising on a computer network; Business organisation advice; Consultancy services regarding business strategies.

Class 41: Providing of training; Occupationally orientated instruction; Training; Personnel training; Publication of the editorial content of sites accessible via a global computer network; Multimedia publishing of electronic publications; Publishing of documents; Publishing by electronic means; Arranging of conferences; Organisation of meetings and conferences; Arranging, conducting and organisation of conferences; Arranging and conducting conferences and seminars.

Class 42: Conducting technical project studies; Conducting feasibility studies relating to computer software; Computer system analysis; Quality control relating to computer systems; Consultation services relating to computer systems.

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 services in Class 35

The contested online advertisements; on-line advertising on a computer network are services that consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity online. These services are provided by specialist companies that study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through the internet.

The contested business management for freelance service providers; business organisation advice; consultancy services regarding business strategies are services that are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products and create a corporate identity.

The opponent’s services in Class 41 are mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention. The services covered by the earlier mark in Class 45 are legal services and personal and social services rendered by others to meet the needs of individuals.

In view of the specificities of the services under comparison, they have a different nature, purpose and method of use.

The opponent argues that these services are similar due to their complementary character, as the contested business management for freelance service providers; business organisation advice; consultancy services regarding business strategies in Class 35 have a significant importance when providing, for example, the opponent’s organisation of courses, workshops, seminars, congresses, conferences in Class 41.

Goods (or services) are complementary, if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Moreover, complementarity has to be clearly distinguished from use in combination, where goods/services are merely used together, whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST et al., § 20).

The Opposition Division finds that although the services in question may be used together, they are neither essential nor significant for each other. Therefore, they are not complementary, and the opponent’s argument must be set aside.

Furthermore, the services are not in competition. Moreover, they are sold through different distribution channels and are provided by different undertakings. Although the contested services target or may target the same end users as those covered by the earlier mark, this fact is not sufficient for a finding of similarity with the opponent’s services. Therefore, they are dissimilar to all of the opponent’s services.

Contested services in Class 41

The contested providing of training; occupationally orientated instruction; training; personnel training overlap with the opponent’s teaching services related to pedagogical techniques and methods. The applicant argues that the contested training; personnel training are ‘linked to personnel (Human resources)’, and that they, therefore, are dissimilar. Whether or not the services in question are linked to human resources does not change the fact that they overlap, as training; personnel training may involve pedagogical techniques and methods. For this reason, the applicant’s argument must be set aside. Therefore, the above services are identical.

The contested arranging of conferences; organisation of meetings and conferences; arranging, conducting and organisation of conferences; arranging and conducting conferences and seminars are either identically contained in both lists of services or overlap with the opponent’s organisation of conferences. Therefore, they are identical.

The contested publication of the editorial content of sites accessible via a global computer network; multimedia publishing of electronic publications; publishing of documents; publishing by electronic means are included in, or overlap with, the opponent’s publication of texts (other than publicity texts), on paper and on-line. The applicant argues that the contested publication of the editorial content of sites accessible via a global computer network are ‘linked to web services and Internet, whereas the services of the prior mark are not’ and that they, therefore, are dissimilar. The Opposition Division does not concur with the applicant, as ‘editorial content of sites accessible via a global computer network’ and ‘texts (other than publicity texts) on paper and online’ may both be linked to web services and the Internet (on-line). In any event, both services are publication services and, therefore, at least overlap. For this reason, the applicant’s argument must be set aside. Therefore, the above services are identical.

Contested services in Class 42

The contested conducting technical project studies; conducting feasibility studies relating to computer software; computer system analysis; quality control relating to computer systems; consultation services relating to computer systems are services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities. They are provided by members of professions such as chemists, physicists, engineers and computer programmers.

Reference is made to the explanation of the opponent’s services above.

In view of the specificities of the services under comparison, they have a different nature, purpose and method of use.

The opponent argues that these contested services are similar to teaching services related to pedagogical techniques and methods; organisation of courses due to their complementary character.

As mentioned above, goods (or services) are complementary if there is a close connection between them, and this has to be clearly distinguished from use in combination, where goods/services are merely used together.

The Opposition Division finds that although the services in question may be used together, they are neither essential nor significant for each other. Therefore, they are not complementary, and the opponent’s argument must be set aside.

Furthermore, the services are not in competition. Moreover, they are sold through different distribution channels and are provided by different undertakings. Although the contested services target or may target the same end users as those covered by the earlier mark, this fact is not sufficient for a finding of similarity with the opponent’s services. Therefore, they are dissimilar to all of the opponent’s 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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

c) The signs

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).

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the earlier mark, the stylised depiction of a silhouette of a person performing an athletic motion within the number 1 is barely perceptible. As this component is likely to be disregarded by the relevant public, it will not be taken into consideration.

Although the characters in the earlier mark slightly overlap, the earlier mark will be perceived as consisting of ‘ONE1TEAM’. Therefore, contrary to the applicant’s argument, the last component in the contested sign will be perceived as ‘TEAM’. While the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Consequently, the earlier mark will be dissected as follows below.

The element ‘ONE’ (‘One’) in the signs is a very basic English word that will be understood in all the Member States of the European Union as the number ‘1’. In the present case, it designates the number of objects defined by the following word (‘TEAM’/’Team’). It may allude to the quality of the services, as it bears connotations of being a laudatory element (the number one, the best). Furthermore, it may be perceived as designating the quantity of teams that the services target. Therefore, this element is weak. The numeral, ‘1’, in the earlier mark merely emphasises the word element ‘ONE’ and, for the reasons explained above, is also weak.

A significant part of the public in the relevant territory will understand the element ‘TEAM’ (‘Team’) in the signs as ‘a group of people organized to work together’; ‘a group of players forming one of the sides in a sporting contest’ (https://www.collinsdictionary.com/dictionary/english/team on 12/09/2019), as this word is occasionally used in Spanish in conjunction with certain events and services included in Class 41. For part of the services in question, it has no direct meaning, and is, therefore, distinctive (e.g. the contested publishing of documents and the opponent’s publication of texts (other than publicity texts), on paper and on-line) and for part of the services, it may serve to designate a characteristic, namely that the services are provided for a team of participants (e.g. the contested providing of training and the opponent’s teaching services related to pedagogical techniques and methods).

Despite the fact that some of the characters in the earlier mark overlap, as mentioned above, the typeface in which it is written is rather standard and, therefore, will not catch the attention of the public. Furthermore, although some of the letters in the contested sign are slightly stylised, this typeface is also relatively standard. The figurative components in the contested sign (the black background and yellow circle) are of a decorative nature and, therefore, weak.

Neither sign has any element that can be considered clearly more dominant or eye-catching than others. However, it must be borne in mind that 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).

Visually, the signs coincide in the verbal elements ‘ONE*TEAM’ (‘One Team’). Although these coinciding elements have a low degree of distinctiveness as explained above, they only differ in the numeral ‘1’ in the earlier mark, in the figurative elements of the contested sign, and in the colours and typefaces in which the signs are written, all of which are weak.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of ‛ONE TEAM’, present identically in both signs. As the differing character, ‘1’, in the earlier mark, merely emphasises the verbal element, ‘ONE’, preceding it, it is unlikely to be pronounced.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will be perceived as ‘ONE TEAM’, the signs are conceptually identical.

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 some of the services in question, contrary to the opponent’s statement, and normal for some of the other relevant services in relation to which it has no direct meaning from the perspective of the relevant public.

e) 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).

As concluded above, the services are partly identical and partly dissimilar, and the relevant public is the public at large and business customers paying an average to high degree of attention. Moreover, the signs are visually similar to an average degree, aurally highly similar, if not identical, and conceptually identical. The distinctiveness of the earlier mark is either low or normal, depending on the services.

The Court has emphasised on several occasions that a finding of a low degree of distinctiveness of the earlier trade mark does not prevent a finding of likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing likelihood of confusion, it is only one factor amongst others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

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). Furthermore, 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).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

As the contested sign contains all the verbal elements of the earlier mark except for the emphasising and subordinate numeral, and as the additional differences between the signs have less impact for the reasons explained above, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, a likelihood of confusion cannot be excluded in the present case, including for the part of the public paying a high degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration. It follows that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

Chantal VAN RIEL

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.