OPPOSITION No B 3 067 413

Phoenix Opleidingen TA/NLP B.V., Raiffeisenlaan 26 -a, 3571 TE, Utrecht, The Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage, Anna van Buerenplein 21A, 2595 DA, Den Haag, The Netherlands (professional representative)

a g a i n s t

Denis Morsomme, Rue des Arbalétriers 7 1, 6600 Bastogne, Belgium (applicant).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 413 is upheld for all the contested services.

2. European Union trade mark application No 17 931 718 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 931 718, , namely against all of the services in Class 41. The opposition is based on, inter alia, the Benelux trade mark registration No 809 958 for the word mark ‘PHOENIX OPLEIDINGEN’. The opponent invoked Article 8(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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 809 958.

1. The services

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

Class 41: Education; training; instruction; courses; seminars and workshops; arranging of educational events, training seminars and courses; publication and edition of books and other printed matter, whether or not via electronic channels; vocational guidance; publishing printed matter and other (electronic) publications.

The contested services are the following:

Class 41: Training.

Training is identically protected by both marks.

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 are directed at the public at large. The degree of attention will be average.

3. The signs

PHOENIX OPLEIDINGEN
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

Considering that some of the verbal elements of the marks have a meaning in Dutch, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

The coinciding elements ‘PHOENIX/PHŒNIX’ (also spelled as ‘feniks’ in Dutch) will be associated by the public under consideration to the name of a mythological bird that burns itself and is born again from its own ashes. Part of the public may also associate it to a city in United States of America. These elements are distinctive for the relevant services.

The word ‘OPLEIDINGEN’ is the Dutch plural for ‘education, teaching or training’. Since it refers to the services themselves, it is not distinctive.

The contested mark includes the word ‘terra’ which meaningless for the public under analysis and is placed below the word ‘PHŒNIX’ (with the ligature of the letters 'O' and 'E'), both elements being represented in standard typeface and surmounted by a figurative element consisting of the depiction of a stylised tree or plant with its roots. These elements are inserted in a rhomboid shape with a double frame in green and grey. Both the word ‘terra’ and the figurative elements are also distinctive for the relevant services. 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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (or top down), which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the elements ‘PHOENIX' and ‘PHŒNIX’ albeit with a slight difference caused by the ligature of the letters 'O' and 'E' in the contested sign, difference which is hardly perceptible if at all. 'PHOENIX' is also the only distinctive element of the earlier mark and both ‘PHOENIX and ‘PHŒNIX’ are placed at the beginning of the signs. They differ in the additional words ‘OPLEIDINGEN’ and ‘terra’, the first being non-distinctive, and in the additional figurative elements of the contested mark, which have less impact on consumers as explained above.

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

Aurally, regardless of the ligature of the letters 'O' and 'E' in the contested sign, the signs coincide in the sound of the elements ‘PHOENIX' and 'PHŒNIX’. 'PHOENIX' is also the only distinctive element of the earlier mark and both ‘PHOENIX and ‘PHŒNIX’ are placed at the beginning of the signs. The signs differ in the pronunciation of the additional words ‘OPLEIDINGEN’ and ‘terra’, the first being non-distinctive.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both marks will be associated with the same concept conveyed by the words ‘PHOENIX’ and ‘PHŒNIX’ and taking further into account that this is not altered by the additional non-distinctive element ‘OPLEIDINGEN’ or the word ‘terra’, the signs are conceptually similar to at least an average degree.

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 goods and 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

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 goods services are identical. The marks are visually, aurally and conceptually similar to the degrees indicated above, on account of the coinciding elements ‘PHOENIX’ and ‘PHŒNIX’, which are both placed at the beginning of the signs where consumers pay more attention. ‘PHOENIX’ is the only distinctive element in the earlier mark and ‘PHŒNIX’ plays a clear distinctive and independent role in the contested mark.

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 or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark 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). Moreover, it constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 809 958. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier Benelux trade mark registration No 809 958 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 other earlier rights 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 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

Martina GALLE

Begoña URIARTE VALIENTE

Arkadiusz GÓRNY

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.