OPPOSITION Nо B 3 090 209

 

András Pogány, Cseppkő köz 5. 3., 1025 Budapest, Hungary (opponent), represented by Péter Pál Horváth, Kossuth tér 13, 1055 Budapest, Hungary (professional representative) 

a g a i n s t

 

brains GmbH, Damenstiftstrasse 11, 80331 München, Germany (applicant).

On 14/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 090 209 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 048 913 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 18 048 913 ‘brains’ (word mark). The opposition is based on European Union trade mark registration No 17 929 760 (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, inter alia, the following:

 

Class 35: Administration of consumer loyalty programs; advertising; business management; marketing; business research; business investigations.

 

The contested services are the following:

 

Class 35: Business consultancy and advisory services; business consulting; business management consultancy and advisory services; business risk assessment services; business management consultancy via the internet; business consultancy to individuals; business consultancy to firms; business advice and consultancy relating to franchising; business management and consultancy services; business strategy services; business strategy and planning services; business advice relating to restaurant franchising; business consultation and management regarding marketing activities; business consultancy services relating to insolvency; consultations relating to business advertising; business advisory services relating to business liquidations; business recruitment consultancy; business merger consultation; business advice relating to accounting; business consultancy services relating to manufacturing; business advice relating to disposals; business acquisitions consultation; business advice relating to franchising; business advice relating to marketing management consultations; business advice relating to growth financing; advice relating to the sale of businesses; business advisory services relating to product development; business consultancy, in the field of transport and delivery; business advice relating to marketing; business planning services; business advice relating to strategic marketing; marketing consulting; business merger services; advisory services (business -) relating to the establishment of franchises; business succession planning; business services relating to the arrangement of joint ventures; business advisory services relating to the establishment and operation of franchises; business advice relating to financial re-organisation; business advisory services relating to product manufacturing; business advisory services relating to company performance; business services relating to the establishment of businesses; advisory services (business -) relating to the operation of franchises; business consultation and management regarding launching of new products; business advisory services provided to determine pay and grading structures; business advisory services to determine pay and grading structures by job evaluation; business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services.

The contested business consultancy and advisory services; business consulting; business management consultancy and advisory services; business risk assessment services; business management consultancy via the internet; business consultancy to individuals; business consultancy to firms; business advice and consultancy relating to franchising; business management and consultancy services; business strategy services; business strategy and planning services; business advice relating to restaurant franchising; business consultation and management regarding marketing activities; business consultancy services relating to insolvency; consultations relating to business advertising; business advisory services relating to business liquidations; business recruitment consultancy; business merger consultation; business advice relating to accounting; business consultancy services relating to manufacturing; business advice relating to disposals; business acquisitions consultation; business advice relating to franchising; business advice relating to marketing management consultations; business advice relating to growth financing; advice relating to the sale of businesses; business advisory services relating to product development; business consultancy, in the field of transport and delivery; business advice relating to marketing; business planning services; business advice relating to strategic marketing; marketing consulting; business merger services; advisory services (business -) relating to the establishment of franchises; business succession planning; business services relating to the arrangement of joint ventures; business advisory services relating to the establishment and operation of franchises; business advice relating to financial re-organisation; business advisory services relating to product manufacturing; business advisory services relating to company performance; business services relating to the establishment of businesses; advisory services (business -) relating to the operation of franchises; business consultation and management regarding launching of new products; business advisory services provided to determine pay and grading structures; business advisory services to determine pay and grading structures by job evaluation; business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services are identical to the opponent’s business management; marketing; advertising; administration of consumer loyalty programs; business research; business investigations either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

While the contested services are manifold, they can be summarised to essentially encompass business consultancy, advisory, assistance, management and administrative services as well as marketing. These services are, as mentioned above, identical to business management, marketing as well as administrative services (such as for example the administration of loyalty programs). As regards business management services (as covered by the earlier mark), the Opposition Division notes that these services cover a broad range of services, they are typically provided by consultants or advisors and involve all kinds of activities associated with running a company, such as, but not limited to controlling, leading, monitoring, organising and planning, assistance in allocation of resources and improving productivity of commercial undertakings.

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 of the earlier mark target the general and professional public (for example administration of consumer loyalty programs), whereas the contested services target a professional public exclusively (for example business consultancy and advisory services). Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81), who will apply an above average degree of attentiveness towards the services found to be identical.

c) The signs

 

	brains
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 earlier mark is a figurative mark. It’s clearly legible verbal element ‘BRAIN’ is depicted in a stylised typeface being written in red coloured capital letters. The whole is placed against a rectangular, grey coloured background, which the Opposition Division considers to be of purely decorative in nature and has, as such, little impact on consumer’s perception of the mark overall. Similar considerations apply as regards the stylisation and colour of the earlier mark. Although the stylisation is rather fanciful, it must be recalled that 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). Therefore, the figurative elements of the contested sign as well as its stylisation and colour, will have little impact on consumers’ overall perception of the sign.

The verbal element ‘BRAIN’ belongs to the English language and will be understood at least by the English-speaking part of the public to refer to an organ inside the head that controls thought, memory, feelings and activity and/or is used to refer to intelligence (information extracted on 11/12/2020 from Cambridge Dictionary at https://dictionary.cambridge.org/dictionary/english/brain?q=brain_1). For the non-English-speaking public the verbal element ‘BRAIN’ has no meaning. While it will have a normal degree of distinctiveness for the relevant public that perceives it as meaningless, its distinctiveness is limited for the remaining part of the relevant public, as it might indicate that the services target persons with a high intellectual capacity or persons who want to acquire such a capacity, or that the providers of the services have a high intellectual capacity.

The contested sign is a word mark consisting of the word ‘brains’. The protection of a word mark concerns the word as such, as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. The fact that the contested sign is depicted in lower case letters only is therefore immaterial. Furthermore, the earlier mark, being a word mark, by means of definition, does not have any dominant (visually more eye catching) elements. As regards the meaning of ‘brains’ similar considerations as for the earlier mark apply. The word ‘brains’ will be understood by parts of the public, in particular the English-speaking public, as the plural form of the word ‘brain’ or as a reference to an intelligent person (information extracted on 11/12/2020 from Cambridge Dictionary at https://dictionary.cambridge.org/dictionary/english/brain?q=brain_1). Just like for the earlier mark, the contested sign will be of normal distinctive character for the public for whom it is meaningless, whereas it will be of limited distinctiveness for the part of the public who will associate it with the above mentioned meanings.

 

Finally, account has to be taken of the fact 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.

Visually, the signs coincide in the string of the letters ‘B-R-A-I-N-*’. Both signs are of similar lengths (5 versus 6 letters). The signs differ on account of the additional letter ‘S’ which is only present at the very end of the contested sign. Furthermore, the signs differ in the figurative elements of the earlier mark, which however have been found to be of limited impact on the consumer’s perception thereof. In this regard it doesn’t matter that for parts of the public the verbal elements of the signs are of limited distinctiveness, too, because for such public both verbal elements will be of equally limited distinctive character. Taking into account that the verbal element of the earlier mark is completely included in the contested sign, and that the signs coincide in its beginnings, which is the part usually catching the consumers attention first, the signs are visually highly similar.

 

Aurally, similar considerations as for the visual comparison apply. Irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‛B/R/A/I/N/*’, present identically in both signs. The signs only differ in the sound of the additional letter ‘S’ in the contested sign, which however is placed at the very end of the sign and as such has a reduced impact on the aural perception of the contested sign. Considering the fact that the signs coincide in the sound of the vast majority of their letters, they are considered to be aurally similar to a high degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs will be perceived by parts of the public as a reference to the brain as an organ or to intelligence, the signs are conceptually identical. For the part of the public who will not associate any meaning with the signs a conceptual comparison is not possible and 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, and to the extent that parts of the relevant public won’t understand the meaning of the earlier mark, its distinctiveness has to be seen as normal. To the extent that parts of the public will perceive the meanings of the earlier mark, as stated above in section c) of this decision, the earlier mark is of limited distinctive character.

 

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.

In the present case, the services have been found to be identical and to be directed at a professional public, who will apply an above average degree of attentiveness. The degree of inherent distinctiveness of the earlier trade mark is, depending on the relevant public, either normal or limited. Moreover, the signs have been found to be visually and phonetically highly similar. Conceptually the signs are, depending on the relevant public, either identical or they cannot be compared. As mentioned above, the signs coincide in the vast majority of their letters and only differ in one letter, which is moreover placed at the very end of the contested sign. The additional differences are stemming from the figurative elements of the earlier mark, which however are of limited impact on the perception of the mark and as such do not contribute much to differentiate the signs in the minds of the relevant public.

As regards these slight differences, account has to be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The Opposition Division is therefore of the opinion that the differences between the signs are clearly outweighed by their strong visual and phonetic similarities, which includes the public for which neither of the signs has a meaning and for whom a conceptual comparison of the signs does not influence the assessment of similarity, as well as the public who will perceive the meanings of the signs and for which the signs are conceptually identical, but of weak distinctive character.

In its observations, the applicant makes several considerations as regards the actual use of the earlier mark compared to the services of the applicant, which are, according to the applicant, different. In this regard, the Opposition Division notes that the examination of likelihood of confusion carried out by the Office is a prospective examination. The comparison of the (goods and) services must be based solely on the wording of the list of (goods and/or) services registered or for which protection is sought. Any actual or intended use not stipulated in the list of (goods and/or) services is, by contrast, irrelevant (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71). Likewise, the particular circumstances in which the (goods and/or) services in question are marketed and/or provided must not be taken into account in the analysis of the likelihood of confusion (15/03/2007, C 171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C 354/11 P, G, EU:C:2012:167, § 73). Consequently, the applicant’s arguments in this regard must be rejected as unfounded.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 929 760. It follows that the contested trade mark must be rejected for all the contested services.

For the sake of completeness, the Opposition Division notes that in its submissions of 25/02/2020 the opponent refers to a second earlier right (Hungarian trade mark registration No M1 801 432) on which, inter alia, the present opposition is based on. As the earlier European Union trade mark registration No 17 929 760 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). For the very same reason it is irrelevant whether the opposition was admissible at all with regard to this additional earlier right.

 

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, 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

 

 

Anna ZIÓŁKOWSKA

Holger Peter KUNZ

Kieran Heneghan

 

 

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.