OPPOSITION No B 3 084 869

Aktua Soluciones Financieras S.L., C/ Via de los Poblados 3, 28033 Madrid, Spain (opponent), represented by Vicario Consulting, S.L., P Castellana, núm. 139-7° izda., 28046 Madrid, Spain (professional representative)

a g a i n s t

Apis IP-Solutions Training AB, Rosenlundsgatan 54, 118 63 Stockholm, Sweden (applicant).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 869 is partially upheld, namely for the following contested service:

Class 41: Education.

2. European Union trade mark application No 18 034 717 is rejected for the above service. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

In opposition decision B 3 086 551 of 30/03/2020, the Opposition Division rejected the contested application for all the services in Classes 35 and 38. This decision has been finalised and the opponent in the present proceedings was informed accordingly. As the opponent did not reply, the Opposition Division considers that the opponent wished to maintain the opposition with respect to the remaining services in Class 41.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 034 717 ‘Astream’ (word mark). The opposition is based on Spanish trade mark registration No 3 049 149, ‘ASTREA’ (word 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 goods and services

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

Class 16: Paper, cardboard and articles of these materials not included in other classes; printed products; binding material; photography’s; stationery shop articles; adhesives (glues) of stationery or for domestic use; material for artists; brushes; typewriters and office items (except furniture); instructional material or teaching material (except apparatus); plastic materials for packaging (not included in other classes); printing characters; printing presses.

Class 38: Telecommunications.

The contested services are the following:

Class 41: Education, entertainment and sport services.

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.

Teaching material (such as printed matter in Class 16) is essential to educational services. Therefore, these goods and services are complementary. This is because, to supply educational services, it is both helpful and usual to use educational textbooks, teaching manuals, etc. Service providers offering any kind of course often hand out these goods to participants as learning aids.

Given the close link between the goods and services in question as regards their relevant public, common origin, and distribution channels, and the fact that the goods complement the services, the contested education is similar to the opponent’s printed products or instructional material or teaching material (except apparatus) in Class 16.

The remaining contested services in this class, namely entertainment and sport services have nothing in common with the opponent’s printed matter, office items and teaching material in Class 16, nor with the telecommunications services in Class 38. The contested services serve needs different from those of the opponent’s goods and services and have different purposes, methods of use and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings. Therefore, they are considered 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 similar are directed at the public at large as well as at business customers with a particular professional knowledge in the field of education. The degree of attention is considered average.

c) The signs and distinctiveness of the earlier mark

ASTREA	Astream
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).

Both signs are word marks, where the earlier mark is depicted in upper-case letters and the contested sign in title-case letters. Nevertheless, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the signs are depicted in upper- or lower-case letters (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

Both signs are meaningless for the relevant public and therefore distinctive to an average degree.

Since the earlier mark has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory – and since the opponent did not claim enhanced distinctiveness – the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in their string of letters and sound ‘ASTREA’ and they differ in the last letter ‘m’ of the contested sign.

Therefore, the signs are visually and aurally similar to a high 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) Global assessment, other arguments and conclusion

The goods and services are partly similar and partly dissimilar and target the public at large as well as business customers with an average degree of attention.

The signs are visually and aurally highly similar and the conceptual comparison is not possible. The earlier mark enjoys a normal degree of distinctiveness.

The only difference between the signs is confined to the last letter ‘m’ in the contested sign. 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. In the present case, this part is ‘ASTREA’, which, moreover, is the complete earlier mark.

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). Moreover, the lack of meaning of the marks is a relevant factor to consider in this regard. Therefore, the difference in one additional letter at the end of the contested sign may be easily overlooked by the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 049 149.

It follows from the above that the contested trade mark must be rejected for the services found to be similar 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

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

Valeria ANCHINI

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.