OPPOSITION No B 3 083 023

Infoadex, S.A., Paseo de la Castellana, 91 - Planta 12, 28046 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

I@D International, Allée de la Ferme de Varâtre, Immeuble Carré Haussmann III, 77127 Lieusaint, France (applicant), represented by Hoche Avocats, 106 rue La Boétie, 75008 Paris, France (professional representative).

On 29/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 023 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 services of European Union trade mark application No 17 982 213 for the figurative mark , namely against all the services in Classes 35 and 41. The opposition is based on Spanish trade mark registration No 3 616 669 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 35: Advertising, marketing and advisory services for the promotion of sales, services of help to the company through market studies; market research and market analysis; analysis and collection of statistics; consultancy services regarding the purchase of advertising space in the media; organization of companies, advisory services for the organization and business management; commercial reports and commercial investigations; commercial business representation services and exclusive sales; Compilation and management of computer databases. Updating public information in a computer database.

Class 41: Education and training services in relation to advertising and marketing; organization and celebration of colloquiums, conferences, congresses, seminars, symposia, workshops (formation); editorial services; online publication services; publication services of non-publishing texts; online edition services; services of organization of competitions and delivery of prizes.

The contested services are the following:

Class 35: Business management, administration and information; marketing of real estate; advertising for commercial or residential real estate; business administration consultancy; business information; business networking; advertising; direct mail advertising; arranging newspaper subscriptions for others; computerized file management; organization of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of publicity texts; rental of advertising space; dissemination of advertising matter.

Class 41: Providing of training; workshops (arranging and conducting of -) [training]; business training services; providing of training for personnel in the field of recruitment, human resources and business management; training courses in strategic planning relating to advertising, promotion, marketing and business; education and training services in the field of business.

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 assumed 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, specialised nature, 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).

The opponent argues that the earlier trade mark is composed of the verbal element ‘IAD’. However, as the applicant points out, the opponent chose to register its mark in a figurative way and, when assessing identity or similarity between signs, they have to be compared in the form in which they are protected, that is, in the form in which they are registered (09/04/2014, T-623/11, Milanowek Cream Fudge / Sahne Toffee et al, EU:T:2014:199, § 38; 08/12/2005, T-29/04, Cristal Castellblanch / Cristal, EU:T:2005:438, § 57). Furthermore, it is irrelevant that the opponent refers to its mark by a particular verbal acronym in its submission, because the consumer will not be assisted by that information on encountering the sign as registered. The inclusion in the database managed by the Spanish Patent and Trademark Office of the information contained in the application for registration provides information only on the perception of the mark applied for by those applying for it, but not at all on its perception by the relevant public (per analogy with 08/07/2020, T-633/19, (fig.) / TOTTO (fig.), EU:T:2020:312, § 40).

The earlier trade mark is a figurative sign consisting of the black capital letter ‘D’ in quite regular font, and a stylised letter ‘i’ in lower-case light-grey with a pink dot, which are both immediately perceived. The letter ‘i’ is placed in central position and is juxtaposed on the other characters, so that it creates, with the beginning of its leg, a hyphen which, in combination with the slanted black lines, gives rise to a letter ‘A’. Therefore, the earlier mark could be read as ‘AiD’ or ‘ADi’. It cannot be excluded that part of the public would read the earlier mark as indicated by the opponent, namely as ‘iAD’. However, it must be noted that this is only one of the possible perceptions of the sign and, due to the particular stylisation described above, it is the least probable. In fact, the explicit use of two distinct fonts, stylisations and colours, to highlight two different units, ‘AD’ and ‘i’, requires a certain cognitive process to read the earlier mark in that way and reading it like that creates a pause between ‘i’ and ‘AD’. In any event, considering the relevant services, none of the possible combinations of letters of the earlier mark has a clear meaning that could impair its distinctiveness. Therefore, the verbal element is considered distinctive to a normal degree.

The contested sign is also a figurative sign, composed of the lower-case letters ‘iad’ placed under the figurative element of a line that suggests the shape of the letters ‘iad’ or at least the letter ‘i’. The letters ‘iad’ are smaller than the figurative element. The whole mark is blue. The contested sign contains no elements that would be descriptive, allusive or otherwise weak for the relevant services, and is therefore distinctive.

The signs under comparison have no element that could be considered clearly more dominant than other elements.

Both signs are short. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually and aurally, the signs coincide in the letters ‘i’, ‘a’ and ‘d’, although in different positions (when the earlier mark is perceived in the most plausible combinations, ‘AD’ and ‘i’ ‘or ‘A’, ‘i’ and ‘D’) or with different emphasis (when the earlier mark is perceived in the combination indicated by the opponent, ‘i’ and ‘AD’) within the signs. The latter is due to the fact that, in the contested sign, the letters are certainly seen and pronounced as the unit ‘iad’ which, moreover, is written in small letters in relation to the visual part.

Account must be taken that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs visually differ in their colours and stylisations and in the figurative element positioned on top of the contested sign, of which at least a stylised letter ‘i’ can be perceived.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised 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 have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, and in application of all the above considerations, the signs are visually and aurally similar only to a low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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. 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services are assumed to be identical and target both the general and the professional public with a degree of attention varying from average to high. The distinctiveness of the earlier mark is normal. The signs are visually and aurally similar to a low degree, due to the presence of the same three letters ‘i’, ‘a’ and ‘d’. However, these letters are positioned in a different order and do not stand out as independent distinctive elements within both signs. The above conclusions apply even to the part of the public that will eventually perceive the earlier mark as ‘iAD’, since, as explained above, due to the stylisation of the various letters some mental steps are required to read the earlier mark in that way; moreover, if perceived in that sequence, a pause between ‘i’ and ‘AD’ would in any event be created contrary to the element ‘iad’ in the contested sign. The conceptual comparison between the signs is not possible as neither has a meaning.

The signs in dispute both have three letters; both are, consequently, short marks and it is considered that the fact that they differ, in the most plausible interpretations of the earlier mark, in the position of the letters is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. As explained above, the shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. Additionally, since the difference between the marks lies with the first letters in each sign, the difference will be quite substantial and readily spotted.

Moreover, the different stylisations of the signs, together with the additional figurative element of the contested sign, contribute to create a sufficient distance between the overall impressions given by the marks.

Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. 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, 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

Mads Bjørn Georg JENSEN

Valeria ANCHINI

Cristina SENERIO LLOVET

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.