OPPOSITION Nо B 3 094 070

 

Ramon Jose Resa Rodríguez, C/ Real Nº 2, 41950 Castilleja de la Cuesta (Sevilla), Spain (opponent), represented by Sonia Álvarez López, Núñez de Balboa, 31, 28001 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Troyes Aube Formation, 217 Avenue Pierre Brossolette, 10000 Troyes, France (applicant), represented by Cabinet Guiu - Jurispatent, 10, Rue Paul Thénard, 21000 Dijon, France (professional representative).

On 25/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 070 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 18 042 415  (figurative mark), namely against all of the services in Class 41. The opposition is based on the earlier EUTM No 14 786 768 (figurative sign). The opponent invoked  Article 8(1)(b) EUTMR.

 

Preliminary remark

The applicant initially did not submit observations within the given deadline of 20/05/2020. However, the applicant later submitted a request for a continuation of proceedings on 19/07/2020 and at the same time paid the fee and submitted its observations in reply. On 25/07/2020 the Office granted the continuation of proceedings. Therefore, the applicant’s observations were taken into consideration and forwarded to the opponent who in turn commented on these observations.

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: Tuition; cultural activities; sporting activities.

 

The contested services are the following:

 

Class 41: Academies [education]; Arranging and conducting of colloquiums, competitions (education or entertainment), conferences, congresses, seminars and symposiums; Workshops (Arranging and conducting of -) [training]; Correspondence courses; Correspondence courses; Entertainment; Education; Education information; Tuition; Exploitation of online non-downloadable electronic publications; Educational examination; Organization of exhibitions for cultural or educational purposes; Practical training [demonstration]; Tuition; Recreation facilities (Providing -); Electronic desktop publishing; Vocational guidance [education or training advice]; Publication of books; Library services; Publication of texts, other than publicity texts; Publication of electronic books and journals on-line; Providing on-line electronic publications, not downloadable.

Some of the contested services are identical (for example tuition) to the 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 the professional customers with specific professional knowledge or expertise.

 

The degree of attention will range from average to high, depending on the specialised nature of the services, the frequency of purchase and their price. In particular, in relation to educational services the consumer will generally be rather attentive as it can affect the education they will receive and possibly their future career. Therefore, the degree of attention will range from average to high.

c) The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

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 contested sign consists of the term ‘YSCHOOLS’ written in a somewhat stylized white upper case typeface, with the letter ‘Y’ being substantially bigger than the other letters. It is placed on a dark blue rectangular background.

The relevant consumers, when perceiving the verbal element of a 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).

The relevant consumers of educational, cultural and publishing services in the European Union will understand the word ‘SCHOOLS’ as being the plural of the word used to describe a place where people are educated as this is a rather basic English word. Therefore, this element would be descriptive for the contested services as it would indicate the place where the services were provided and as such it is non-distinctive. The figurative element of the contested sign comprises the somewhat stylized typeface which has the top left parts of the letters ‘O’ missing, and the colours and layout which are not particularly striking or fanciful and therefore, they are considered to be merely decorative and secondary. The contested sign does not have any element which is considered to be more dominant (visually eye-catching) than other elements. The most distinctive part of the sign is the letter ‘Y’.

The word ‘school’ also appears in the earlier mark and the same considerations would apply as outlined above, namely, that it is non-distinctive. The letter ‘Y’ in the contested sign, without further information, would not have any exact meaning for the relevant consumer and would be distinctive to a normal degree. The letter ‘Y’ in the earlier sign will be understood as being the abbreviation of the word ‘yago’ which appears below it as the practice of putting a word and its abbreviation in trade marks is rather common. It is distinctive to an average degree. The word ‘yago’ is the Spanish form of the Hebrew name James/Jakob/Jacob. It can be a male forename and it can also be a surname, some consumers in the European Union may not understand this word to have any particular meaning. In either case this word has no meaning in relation to the relevant services and is therefore distinctive. The figurative element, namely, the navy ‘Y’ within a white shield outlined in navy is placed above the verbal element which is depicted in a rather stylized typeface. The colours, font and device and layout have a certain degree of distinctive character. The Opposition Division agrees with the opponent that the most dominant element of the earlier mark is the device of a shield containing the letter ‘Y’ due to its size and position within the sign.

Visually, the signs coincide in the letter ‘Y’ and the word ‘SCHOOL’, although the letter ‘Y’ is separated from the word element in the earlier sign and placed within a shield, while it is attached to the word ‘SCHOOLS’ in the contested sign. Moreover, the word ‘SCHOOLS’ in the contested sign is plural while it is singular in the earlier mark. Although the signs both contain the colours navy/dark blue and white they differ in their figurative layout, the typeface used, and also in the additional distinctive word ‘yago’. The opponent argues that the contested sign is fully incorporated into the earlier mark and therefore is nearly identical or at least very similar. However, contrary to the opponent’s argument, the fact that the signs coincide in the word ‘SCHOOL(S)’ must not be overstated as this word is non-distinctive in relation to the relevant services at issue and the letter ‘Y’ is depicted very differently in both signs and it will be understood as the abbreviation of the word ‘yago’ in the earlier mark whereas no particular meaning will be associated with it in the contested sign. Therefore, overall the signs visually only have a very low degree of similarity.

Aurally, the signs coincide in sound of the string of letters ‘SCHOOL’. They differ in that there is an additional letter ‘S’ in the word ‘SCHOOLS’ in the contested sign. It is noted that there is a letter ‘Y’ in both signs. However consumers generally shorten longer signs and in the earlier mark the letter ‘Y’ will be merely seen as the abbreviation for the word ‘yago’ so, contrary to the contested mark, it will not be pronounced. This follows from the rule of economy of language for consumers can apply so that it can be assumed that some elements will be pronounced while others will be omitted (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). The signs also differ in the additional distinctive word ‘yago’ which has no counterpart in the contested sign even though it does contain a ‘y’ at the start which may have some similarities with the ‘Y’ in the contested sign. Again, the fact that the signs coincide in a non-distinctive element ‘SCHOOL(S)’ will have a very limited impact on the signs. Therefore, aurally the signs have only a low degree of similarity.

Conceptually, reference is made to the previous findings regarding the semantic content of each element of the signs and their respective distinctive and dominant components. The signs coincide in the word ‘SCHOOL(S)’ (singular and plural respectively) which is non-distinctive. They also coincide in the letter ‘Y’. However, in the contested sign the concept will lie in the letter alone whereas in the earlier mark this letter will be seen as the abbreviation of the word ‘yago’. Moreover, they differ in the concept of a shield present in the earlier sign. Therefore, the signs are conceptually only similar to a very low degree.

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).

In the present case the signs were found to be visually and conceptually similar to a very low degree and aurally similar to a low degree. The services were assumed to be identical. The earlier mark has an average degree of distinctive character and the attention of the relevant public will range from average to high.

Although the signs coincide in the element ‘SCHOOL(s)’ this word is non-distinctive and therefore its impact on the overall impression of the signs is extremely limited (if at all) as it will not be seen as an indication of the commercial origin of the services but merely a description of the type of establishment offering the services. Also the fact that they coincide in the letter ‘Y’ is not decisive as the depictions and meanings of this letter are different in both signs and the distinctive word ‘yago’ is not included in the contested sign.

 

The additional different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common element ‘SCHOOL(S)’ is descriptive for the relevant public. Moreover, the dominant figurative element of the earlier sign, being a shield with the letter ‘Y’ is not included in the contested sign.

 

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

 

Ioana MOISESCU

Nicole CLARKE

María Belén IBARRA DE DIEGO

  

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.