OPPOSITION No B 3 072 297

HolotropicUK Ltd, 5 Colindeep Lane, London NW9 6BX, United Kingdom (opponent),

a g a i n s t

Stanislav Grof and Brigitte Luise Grof, Hinterbergstr. 16c, 65207 Wiesbaden, Germany (applicants), represented by Tam von Bülow, Am Klueshof 22, 24955 Harrislee, Germany (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 297 is partially upheld, namely for the following contested goods and services:

Class 9: Audio books in the field of psychology, downloadable electronic books in the field of psychology; podcasts; downloadable mp3 files; Mp3 recordings; downloadable on line discussion board posts; webcasts; downloadable webinars; audio books in the field of psychology.

Class 16: Printed matter; books; brochures; booklets; teaching materials in the field of psychology.

Class 41: Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of spiritual or psychological healing, consciousness, direction and practice and distribution of training material in connection therewith; life coaching services in the field of spiritual healing, consciousness, direction and practice; personal coaching services in the field of spiritual healing, consciousness, direction and practice; training services in the field of spiritual healing, consciousness, direction and practice spiritual healing, consciousness, direction and practice.

2. European Union trade mark application No 17 941 017 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 941 017 ‘Grof Holotropic’. The opposition is based on United Kingdom trade mark registration No 3 270 874 ‘Holotropic Breathwork’. 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 goods and services

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

Class 41: Arrangement of seminars for educational purposes; Arranging and conducting of educational courses; Education services.

The contested goods and services are the following:

Class 9: Audio books in the field of psychology, downloadable electronic books in the field of psychology; Podcasts; Downloadable mp3 files; Mp3 recordings; Downloadable On line discussion board posts; Webcasts; Downloadable Webinars; Audio books in the field of psychology.

Class 16: Printed matter; Books; Brochures; Booklets; Teaching materials in the field of psychology.

Class 25: Clothing; Shirts; Pants; Skirts; footwear; headgear.

Class 38: Audio and video broadcasting services provided via the Internet.

Class 41: Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of spiritual or psychological healing, consciousness, direction and practice and distribution of training material in connection therewith; Life coaching services in the field of spiritual healing, consciousness, direction and practice; Personal coaching services in the field of spiritual healing, consciousness, direction and practice; Training services in the field of spiritual healing, consciousness, direction and practice spiritual healing, consciousness, direction and practice; Video production services; Audio and video recording services.

Class 44: Providing information in the field of psychological counseling and treatment; Psychological counseling; Providing a website featuring information concerning alternative health; providing a website featuring information about health, wellness and nutrition; Providing an Internet website portal in the field of psychology.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 goods in Class 9

All the contested goods in Class 9 - audio books in the field of psychology, downloadable electronic books in the field of psychology; podcasts; downloadable mp3 files; Mp3 recordings; downloadable on line discussion board posts; webcasts; downloadable webinars; audio books in the field of psychology - are similar to the opponent’s education services in Class 41 as they can coincide in producers and providers, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Class 16

The contested printed matter; books; brochures; booklets; teaching materials in the field of psychology and the opponent’s education services in Class 41 are similar as they can have the same purpose. They can also coincide in producers and providers, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Class 25

The contested goods in Class 25, being essentially clothing, footwear, headgear, do not share relevant points of contact with the opponent’s educational services in Class 41 such as to justify a finding of similarity. They have a different nature and purpose, are neither complementary nor compete; they normally have different distribution channels, and providers/producers. Therefore, they are dissimilar.

Contested services in Class 38

The contested services in Class 38, being essentially online broadcasting services, do not share relevant points of contact with the opponent’s educational services in Class 41 such as to justify a finding of similarity. Even if they may be considered to be somewhat complementary (in the sense that nowadays educational services may be provided online), they have a different nature and purpose, they do not compete; they normally have different distribution channels, and providers/producers. Therefore, they are dissimilar.

Contested services in Class 41

The contested educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of spiritual or psychological healing, consciousness, direction and practice and distribution of training material in connection therewith; life coaching services in the field of spiritual healing, consciousness, direction and practice; personal coaching services in the field of spiritual healing, consciousness, direction and practice; training services in the field of spiritual healing, consciousness, direction and practice spiritual healing, consciousness, direction and practice, which are all in the nature of education or training, are included in the broad category of the opponent’s education services. Therefore, they are identical.

However, the contested video production services; audio and video recording services have a different nature and purpose from the opponent’s educational services. Furthermore, they are neither complementary to, nor in competition with, each other. Their distribution channels and methods of use are also different. Consumers would not think that these services are provided by the same undertakings. Therefore, they are dissimilar.

Contested services in Class 44

The contested services in Class 44, being essentially in the fields of healthcare and psychology, do not share sufficient points of contact with the opponent’s education services in Class 41 such as to justify a finding of similarity.

Despite the fact that the opponent’s educational services in Class 41 may include such services in the field of healthcare and psychology, the purpose of the opponent’s services in Class 41 is to give systematic instruction for the public to acquire knowledge and understanding of specific subjects by formal schooling, teaching or training whereas the purpose of the contested services in Class 44 is the treatment of the consumers’ health.

Moreover, the opponent’s services are rendered by persons, associations or institutions in the development of the mental and/or physical faculties of an individual which do not normally provide services for the treatment of patients, whether physical or psychological.

In light of the above, they have a different nature and purpose, they do not compete or complement each other; they normally have different distribution channels, and providers/producers. Therefore, they are dissimilar.

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 goods and services found to be identical or similar are directed at the public at large.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. For example, the relevant public is likely to exercise a higher than average degree of attention with respect to the relevant services in Class 41 given that such services relate to a person’s health, well-being, or psychological state.

c) The signs

Holotropic Breathwork	Grof Holotropic
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 consists of the word mark ‘Holotropic Breathwork’; the word ‘Holotropic’ is not a word that exists in the English language and will not be perceived as having any clear or direct meaning when considered as a whole and is, therefore, distinctive to a normal degree in relation to the services concerned.

Meanwhile, the word ‘Breathwork’ is meaningful for the vast majority of the relevant UK public as it will be perceived by them as being synonymous with breathing exercises (e.g. work on one’s breathing). As the term ‘Breathwork’ will be perceived as being merely descriptive of the subject matter of the services in question (i.e. education services relating to a certain kind of breathing exercises), it is devoid of distinctive character.

In light of the above, the word ‘Holotropic’ in the contested sign will not be perceived as having any clear or direct meaning when considered as a whole and is, therefore, distinctive to a normal degree in relation to the relevant goods and services. The word ‘Grof’ has no meaning for the majority of the relevant UK public even if it is not excluded that at least some thereof will perceive it as a surname of foreign origin. In any event, as the word ‘Grof’ bears no reference to the relevant goods and services it is normally distinctive thereof.

Visually and aurally, the signs coincide in the identical word ‘Holotropic’ (and in the sound of its pronunciation); they differ in the second word of the earlier mark (‘Breathwork’) and the first word of the contested sign (‘Grof’) and in the pronunciation of these elements.

Bearing in mind the lack of distinctiveness of the word ‘Breathwork’ and its positioning after the coinciding word ‘Holotropic’, the signs are considered to be visually and phonetically similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘Breathwork’ of the earlier mark will evoke a concept, it does not constitute a significant difference between the signs as this element is non-distinctive of the services in question and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal element 'Holotropic', which has no clear or direct meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs, save for the part of the UK public that perceives the word ‘Grof’ of the contested sign as a surname, as stated above, for which part of the public the marks will, therefore, not be 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.

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

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).

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.

The signs have been found to be visually and phonetically similar to an average degree and either not conceptually similar or the conceptual aspect does not influence the assessment of the similarity of the signs. The goods and services are partly identical or similar and partly dissimilar. The earlier mark as a whole is normally distinctive and the degree of attention may vary from average to high.

Taking all the relevant factors into consideration, the Opposition Division considers that even if the differences between the signs will not go unnoticed – the word ‘Grof’ of the earlier mark and the non-distinctive additional word ‘Breathwork’ of the contested sign – as well as the fact that the coinciding word appears in a different position in each sign at issue, a likelihood of confusion still exists, as the said coinciding element ‘Holotropic’ plays an independent distinctive role in both signs.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to the services of the earlier trade mark, regardless of whether an average or high degree of attention is displayed by consumers.

The rest of the contested goods and 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 goods and 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Kieran HENEGHAN

Martin INGESSON

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.