OPPOSITION Nо B 3 104 320

 

Inštitut montessori, Zavod za pomoč staršem pri razvoju otrok, Ulica Ferda Kozaka 49, 1000 Ljubljana, Slovenia (opponent), represented by Meti Ketner, Ketner, Legal Consultancy, Representation and Protection, LTD., Tržaška cesta 134, 1000 Ljubljana, Slovenia (professional representative) 

 

a g a i n s t

 

AG&D, 9 Av René Coty, 75014 Paris, France (applicant), represented by Karim Laouafi, 29 Rue Jean de Beauvais, 75005 Paris 05, France (professional representative).

On 15/03/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 104 320 is partially upheld, namely for the following contested goods and services:

 

Class 9: Software; Recorded tapes; Magnetic recordings; Optical disc recordings; Recorded data files; downloadable multimedia files; Data recorded electronically; Magnetic data carriers, recording discs; Magnetic tapes; Magnetic tapes; Magnetic recording tapes; Optical discs; Disks, magnetic; Magneto-optical discs; Diskettes; Compact discs; Tape cassettes; Audio/visual devices; Data storage devices and media; Data processing equipment and accessories (electrical and mechanical); Audio cassettes and tapes; Electronic publications, downloadable; Downloadable electronic publications in the nature of magazines; Weekly publications downloaded in electronic form from the internet; Data processing apparatus; Computers; Computer software packages; Computer software packages; Integrated software packages; Downloadable software applications; Computer application software; Downloadable applications for use with mobile devices; Mobile apps. Class 16: Printed matter; Paper; Paperboard; Cardboard boxes; Boxes of cardboard or paper; Posters; Scrapbooks; Cards; Books; Manuals [handbooks]; Newspapers; Prospectuses; Calendars; Writing instruments; Educational equipment; Printed brochures; Binders; Printed reports; Printed research reports; Printed consumer reports; Paper teaching materials; Teaching materials [except apparatus]; Teaching materials [except apparatus]; Paintings [pictures], framed or unframed; Paintings [pictures], framed or unframed; Aquarelles; Patterns for dressmaking; Printed questionnaires; Drawings; Paper stationery; Stickers [stationery]; Stickers [decalcomanias]; Pamphlets; Advertising pamphlets; Photographs; Stationery. Class 28: All the goods in this class. Class 41: All the services in this class. Class 42: Technical research projects and studies.

2.

European Union trade mark application No 18 095 018 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 18 095 018  (figurative mark), namely against all the goods and services in Classes 9, 16, 28, 35, 41, 42 and 44. The opposition is based on, inter alia, Slovenian trade mark registration No 201 571 258 'MONTESSORI' (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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Slovenian trade mark registration No 201 571 258.

a) The goods and services

 

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

 

Class 16: Albums; almanacs; newspapers; geographical charts; graphic reproductions; cards; booklets; calendars; leaflets; songbooks; posters (poster); posters made of paper or cardboard; portraits; postcards; magazines; magazines (periodicals); pictures; paintings, photographs framed or unframed; comics; boxes of cardboard or paper; boxes of crayons (school supplies); school supplies (stationery); stamps (seals); printed schedules; printed materials; textbooks; teaching materials (with the exception of devices); greeting cards; tracing patterns; patterns for embroidery; flags (paper); trading cards, not for games; earth globes; notebooks, writing or drawing.

Class 28: Board games; toys; toys with a filler; toy-cars; playing cards; games; games on the plates; games with rings; pachinko game; cubes (toys); sets of models for the assembly (toys); decorations for Christmas trees, except for lamps, candles and confectionery; plush toys; teddy bears; pedestals for Christmas trees; dolls (toys); carnival masks; rattles for babies; Jigsaw (chopped into cubes images); puzzles (eg. cubes); candle holders for Christmas trees; chess; chessboards; hanging figures (toys); spinners; spinners (toys); bells for Christmas trees; balls; balls, bigger.

Class 41: Academies (education); correspondence education; information about education; information on events; information about recreation; coaching; boarding schools; educational examination; education; rental of toys; lending of books; rental of games; libraries; mobile libraries; museums (museum exhibitions, presentations); DTP; life performance; publication of texts (other than advertising); publication of electronic books and magazines on a computer network; publication of books; organization and implementation of seminars; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting conferences; organization and management of congresses; arranging and conducting of symposiums; organization of cultural or educational exhibitions; organization of sports competitions; organization of competitions (entertainment and education); arranging and conducting of workshops (training); kindergartens; holiday camps; career guidance; teaching; practical training (demonstration); religious education; physical education; teaching gymnastics; entertainment.

 

The contested goods and services are the following:

 

Class 9: Software; Recorded tapes; Magnetic recordings; Optical disc recordings; Recorded data files; downloadable multimedia files; Data recorded electronically; Magnetic data carriers, recording discs; Magnetic tapes; Magnetic tapes; Magnetic recording tapes; Optical discs; Disks, magnetic; Magneto-optical discs; Computer databases; Diskettes; Compact discs; DVD recorders; Tape cassettes; Audio/visual and photographic devices; Data storage devices and media; Data processing equipment and accessories (electrical and mechanical); Audio cassettes and tapes; Electronic publications, downloadable; Downloadable electronic publications in the nature of magazines; Weekly publications downloaded in electronic form from the internet; Data processing apparatus; Computers; Firmware; Firmware memory devices; Firmware and device drivers; Computer software packages; Computer software packages; Integrated software packages; Downloadable software applications; Computer application software; Downloadable applications for use with mobile devices; Mobile apps.

Class 16: Printed matter; Printing blocks; Paper; Paperboard; Cardboard boxes; Boxes of cardboard or paper; Posters; Scrapbooks; Cards; Books; Manuals [handbooks]; Newspapers; Prospectuses; Calendars; Writing instruments; Educational equipment; Printed brochures; Binders; Printed reports; Printed research reports; Printed consumer reports; Paper teaching materials; Teaching materials [except apparatus]; Teaching materials [except apparatus]; Paintings [pictures], framed or unframed; Paintings [pictures], framed or unframed; Aquarelles; Patterns for dressmaking; Printed questionnaires; Drawings; Paper stationery; Stickers [stationery]; Stickers [decalcomanias]; Pamphlets; Advertising pamphlets; Photographs; Stationery.

Class 28: Models being toys; Scale model aeroplanes; Miniatures for use in games; Toy figurines; Toy figurines; Positionable toy figures; Card games; Board games.

Class 35: Business management and organization consultancy; Market studies; Business management; Presentation of goods on communication media, for retail purposes; Organization of exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Publication of publicity texts; Consultancy regarding advertising communications strategy; Consultancy regarding public relations communications strategy; Public relations services; Financial auditing; Financial auditing.

Class 41: Education; Providing of training; Entertainment; Education information; Vocational retraining; Publication of books; Library services; Administration [organisation] of contests; Arranging and conducting of colloquiums; Arranging and conducting of conferences; Arranging and conducting of congresses; Publication of electronic books and journals on-line; Conducting workshops [training]; Workshops (Arranging and conducting of -) [training]; Arranging professional workshop and training courses; Electronic online publication of periodicals and books; Electronic desktop publishing; Publishing services; Correspondence courses; Correspondence courses; Publication of educational texts; Organising of educational lectures.

Class 42: Engineering services; Technical research projects and studies; Computer software design; Installation of software; Programming of multimedia applications; Rental of software; Updating of computer software.

Class 44: Human healthcare services; Mental health services; Health assessment surveys; Advice relating to the personal welfare of elderly people [health]; Advisory services relating to health.

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

The contested software; computer software packages (listed twice); integrated software packages; downloadable software applications; computer application software; downloadable applications for use with mobile devices; mobile apps have relevant points in common with the opponent’s games in Class 28, which cover all kinds of games, including games belonging to the gambling industry, whether they are electronic or not, and games aimed at the general public or for business customers. The contested goods, which include games software, are essential for the functioning of e.g. the electronic or on-line games of chance. The nature of those goods is the same as that of electronic or on-line games of chance and they may have the same distribution and manufacturing channels. Furthermore, software/firmware intended for e.g. casino and amusement arcade games may be used in the same establishments as those in which games of chance are kept, namely casinos and amusement arcades, and may be purchased by the same professionals. Therefore, they are similar.

The contested recorded tapes; magnetic recordings; optical disc recordings; recorded data files; downloadable multimedia files; data recorded electronically; magnetic data carriers, recording discs magnetic tapes (listed twice); magnetic recording tapes; optical discs; disks, magnetic; magneto-optical discs; diskettes; compact discs; tape cassettes; data storage devices and media; audio cassettes and tapes are or encompass data carriers and discs with pre-recorded content. These contested goods are similar to the opponent’s printed materials in Class 16 since they can have the same purpose, target the same relevant public and originate from the same undertakings. Furthermore, they may be in competition.

The contested audio/visual devices; data processing equipment and accessories (electrical and mechanical); data processing apparatus; computers are similar to the opponent's games in Class 28. Games include, as a broader category, video game consoles which are primarily designed for playing games. The contested goods include, as a broader category, computers which can also be used to play games. Computers can even be equipped with specific components (e.g. high-performance video cards) which make them particularly suitable for gaming. As such, they can target the same relevant public and can coincide in producers and distribution channels.

The contested electronic publications, downloadable; downloadable electronic publications in the nature of magazines; weekly publications downloaded in electronic form from the internet are similar to the opponent's printed materials in Class 16 because they have the same purpose. They usually coincide in producer and relevant public. Furthermore, they are in competition.

The contested computer databases; DVD recorders; photographic devices; firmware; firmware memory devices; firmware and device drivers are dissimilar to the opponent’s goods and services in classes 16 (printed matter, stationery, educational materials and supplies, works of art), 28 (toys, games and playthings, festive decorations) and 41 (education, entertainment and sports services, publishing services). Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested goods in class 16

The contested boxes of cardboard or paper; cards; newspapers; calendars are identically contained in both lists of goods (including synonyms).

Despite the slightly different wording, the contested printed matter; cardboard boxes; teaching materials [except apparatus] (listed twice) are identical to the opponent’s printed materials; boxes of cardboard; teaching materials (with the exception of devices), respectively.

The contested paper; paperboard; writing instruments; binders; paper stationery; stationery are identical to the opponent’s school supplies (stationery) because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested scrapbooks are included in the opponent's broad category of albums. Therefore, they are identical.

The contested posters; books; manuals [handbooks]; prospectuses; printed brochures; printed reports; printed research reports; printed consumer reports; paper teaching materials; patterns for dressmaking; printed questionnaires; stickers [stationery]; stickers [decalcomanias]; pamphlets; advertising pamphlets are included in the opponent's broad category of printed materials. Therefore, they are identical.

The contested educational equipment includes, as a broader category, the opponent's teaching materials (with the exception of devices). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested paintings [pictures], framed or unframed (listed twice); aquarelles; drawings; photographs are included in the opponent's broad category of paintings, photographs framed or unframed. Therefore, they are identical.

However, the contested printing blocks, which are parts, components or fittings of a final product, are dissimilar to all the opponent’s goods and services. They have different natures and purposes, target different consumers, are distributed through different channels and are manufactured and provided by different undertakings. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested goods in class 28

Board games are identically contained in both lists of goods.

The contested models being toys; miniatures for use in games; positionable toy figures; toy figurines (listed twice) are included in the opponent's broad category of toys. Therefore, they are identical.

The contested card games are included in the opponent's broad category of games. Therefore, they are identical.

The contested scale model aeroplanes are at least similar to a high degree to the opponent's games because they have a similar nature, being toys or games, and purpose, namely providing pleasure and amusement. These goods may be manufactured by the same companies and target the same consumers through the same distribution channels.

Contested services in class 35

Advertising services provide sellers with assistance in the sale of their goods and services by promoting their launch and/or sale, or help to reinforce a client’s position in the market and acquire competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

All kinds of business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

All kinds of business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation.

Consequently, the contested business management and organization consultancy; market studies; business management; presentation of goods on communication media, for retail purposes; organization of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; publication of publicity texts; consultancy regarding advertising communications strategy; consultancy regarding public relations communications strategy; public relations services; financial auditing (listed twice) which are or fall under the broad categories of advertising, business management and business administration have a different nature, purpose, and method of use from the opponent’s goods and services in classes 16, 28 and 41. They are not complementary nor in competition. Furthermore, they do not originate from the same undertakings, they are offered through different distribution channels and target a different relevant public. They are therefore dissimilar.

Contested services in class 41

Education; entertainment; publication of books; library services; arranging and conducting of colloquiums; arranging and conducting of conferences; arranging and conducting of congresses are identically contained in both lists of services (including synonyms).

The contested providing of training; education information; vocational retraining; conducting workshops [training]; workshops (Arranging and conducting of -) [training]; arranging professional workshop and training courses; correspondence courses (listed twice); organising of educational lectures are included in the opponent's broad category of teaching. Therefore, they are identical. It is relevant to point out that, teaching is a broad category which includes, inter alia, training services, such as practical training, training of animals or sports training.

The contested administration [organisation] of contests is included in the opponent's broad category of organization of competitions (entertainment and education). Therefore, they are identical.

The contested publication of electronic books and journals on-line; electronic online publication of periodicals and books overlap with the opponent's publication of electronic books and magazines on a computer network. The contested electronic desktop publishing; publishing services; publication of educational texts include, are included in, or overlap with, the opponent’s publication of texts (other than advertising). Therefore, they are identical.

Contested services in class 42

The contested technical research projects and studies are similar to the opponent's education. Universities carry out a lot of research, not only as academic training but as a stand-alone part of what they do. Universities bid on tenders to be able to provide such research services, and as such this is a service that can be provided to third parties. Thus, the services under comparison can be provided by the same providers and through the same distribution channels. They also coincide in general purpose of acquiring and/or imparting or disseminating knowledge or skills.

The contested engineering services; computer software design; installation of software; programming of multimedia applications; rental of software; updating of computer software are dissimilar to the opponent’s goods and services in Classes 16, 28 and 41. Although goods and services which are classified as belonging to different classes of the Nice Classification can still be similar, there appears in the present case to be no relevant point of contact between the opponent’s goods and services and the cited contested services. The latter concern services related to engineering and software, while the opponent’s goods include (Class 16) printed matter, stationery, educational materials and supplies, works of art, (Class 28) toys, games playthings and festive decorations, and its services, (Class 41) education, entertainment and sports services, publishing services. Their nature, intended purpose and consumers differ. The businesses manufacturing and providing the aforesaid goods and services and the companies providing the services in question are different. Furthermore, the goods and services under comparison are neither complementary nor in competition. They are therefore dissimilar.

Contested services in class 44

The contested human healthcare services; mental health services; health assessment surveys; advice relating to the personal welfare of elderly people [health]; advisory services relating to health are all health care services which have no relevant criteria in common with the opponent’s goods and services in classes 16, 28 and 41. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition. They are therefore 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 (to varying degrees) are directed at the public at large and professionals (e.g. from the education field).

The degree of attention is considered to be average.

 

c) The signs and distinctiveness of the earlier mark

 

MONTESSORI
Earlier trade mark	Contested sign

 

The relevant territory is Slovenia.

 

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 word mark, for which it is irrelevant whether it is written in lower-case or capital letters, consists of the verbal element ‘MONTESSORI’.

As far as the distinctive character of the element ‘MONTESSORI’ is concerned, the applicant argues that it is non-distinctive for goods and services in Classes 16, 28 and 41 consisting in or related with education/pedagogy and that it is a term massively used in business life and necessary in current language, in relation with which the opponent cannot be granted a monopoly. In support of its assertions the applicant files: two screenshots with the results of a general search by the keyword "Montessori" on the Google search engine; a screenshot of the first page of a search in Google, based on which the opponent affirms that, even in Slovenia, the opponent is not the only company to use the term ‘MONTESSORI’; the list of results of a TMview search for European Union trade marks and trade marks registered in European Union member states (for goods and/or services in classes 9, 16, 28, 35, 41, 42 and 44) consisting in or including ‘MONTESSORI’; a printout which, according to the applicant, is an excerpt of the opponent’s website, indicating that the director and cofounder of the opponent specialized ‘at different international schools in Europe and USA in the field of the Montessori education’.

In view of the above, it must first be noted that the documents filed by the applicant, alone or combined with each other, do not provide conclusive evidence supporting its arguments. In particular, a TMview result list, or even excepts from official databases including all the relevant information on trade marks consisting in or containing the term ‘MONTESSORI’ (which have, nonetheless, not been filed by the opponent), are not per se particularly conclusive, since they do not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register, it cannot be assumed that all such trade marks have been effectively used. It follows that the mere reference to other trade mark registrations does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘MONTESSORI’. Furthermore, the very few screenshots with listed results on the word ‘MONTESSORI’ in internet and the printout filed by the applicant do not demonstrate such exposure to widespread use either.

Having said this, ‘MONTESSORI’ is an Italian surname which, as such, need not be known in the relevant territory. However, as pointed out by the opponent, when considered in the context of goods and services consisting of or related with education, such as the relevant goods and services, it will be associated with the ‘MONTESSORI’ method of education for children developed by Italian physician Maria Montessori in the early 1900s, namely, a method which emphasizes independence, views children as naturally eager for knowledge and capable of initiating learning in a sufficiently supportive and well-prepared learning environment. This method has been used in many parts of the world in public and private schools, it remains influential and part of its original ideas are commonplace nowadays. It follows that ‘MONTESSORI’, in the context of goods and services consisting of or related with education suggests that they comply with/follow the so-called educational method. Therefore, its distinctive character is considered to be low for all the goods and services in question, since they all consist in or are related to education.

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.

It must be recalled that, earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court has made it clear that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’ (24/05/2012, C 196/11 P, F1-Live, EU:C:2012:314, § 40-41). Furthermore, the Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. Therefore, the earlier mark under examination, i.e. a registered mark in Slovenia, has at least the minimum degree of distinctiveness (24/05/2012, C‑196/11 P, F1‑Live, EU:C:2012:314, § 40‑41).

Considering what has been stated above, the distinctiveness of the earlier mark must be seen as low.

The contested sign is a figurative mark. It is composed of a figurative element, namely, a bird in profile flapping its wings, depicted in different shades of blue and turquoise, and of the following verbal elements depicted in blue and displayed in three levels: (1) the capitalised verbal element ‘Montessori’, placed at the top of the sign and written in standard bold letters, (2) the capitalised verbal element ‘Lifestyle’, placed under ‘Montessori’ and written also in standard bold letters and (3) the string of words ‘Plus d’autonomie, plus de vie!’, placed in the bottom line of the sign, written in much smaller size than the previously cited verbal elements and in lower-case standard letters (except for the initial letter P).

The distinctiveness of the figurative element of the contested sign is normal. Nonetheless, it must be noted 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 Opposition Division is of the opinion that the relevant public will focus their attention primarily on the verbal part in the contested sign.

The verbal element ‘Montessori’ will be perceived with the same meaning indicated above, thus the considerations as to its low distinctive character, in relation with the goods and services found to be identical or similar to those protected under the earlier mark, are equally valid here.

The second verbal element of the contested sign, ‘Lifestyle’, is an English word meaning ‘set of attitudes, habits, or possessions associated with a particular person or group; such attitudes, etc, regarded as fashionable or desirable’ (information extracted from Collins Online Dictionary on 04/03/2021 at https://www.collinsdictionary.com/dictionary/english/lifestyle). This concept will be understood by a substantial part of the relevant public and will be immediately perceived as informing that the relevant goods/services fit a given lifestyle, in the sense of a desirable way to live.

For reasons of procedural economy and to take into account the semantic aspect of the term ‘Lifestyle’ in the comparison, the Opposition Division shall proceed with the assessment on the basis of the part of the relevant public for which said term is meaningful and hence endowed with a low distinctive character, as it refers to a desirable manner of living.

The slogan ‘Plus d’autonomie, plus de vie!’ is made up of French terms (meaning ‘more autonomy, more life!’) which will not be understood by the relevant public. It is, hence of normal distinctiveness. However, due to its minimal size and ancillary position in the contested sign, this sentence is clearly overshadowed by the remaining elements portrayed above it in a substantially larger size. Furthermore, consumers naturally tend to shorten long marks in order to reduce them to elements that are easier to refer to and remember (07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T-400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T- 460/11, Bürger, EU:T:2012:432, § 48). Therefore, these additional words are likely to be disregarded by the relevant public when pronouncing the contested sign.

Taking into account the size and position of the elements within the contested sign, the verbal elements ‘Montessori Lifestyle’ and the figurative element are the dominant (visually eye-catching) elements.

 

Visually, the signs are similar in so far as they both contain the element ‘Montessori’, which, constitutes the entirety of the earlier mark and is included as the top and, therefore, initial verbal element in the contested sign. The signs differ in the elements ‘Lifestyle’ and ‘Plus d’autonomie, plus de vie!’ (the latter being visually overshadowed by the much larger remaining elements) of the contested sign, which have no equivalent in the earlier mark. Likewise, they differ in terms of the colours and figurative element in the contested sign.

Taking into consideration the above conclusions on the distinctiveness and dominance of the different elements in the contested sign and that the signs share the sole element of which the earlier trade mark is composed, reproduced as the first verbal element in the contested sign (the consumer reads from top to bottom and from left to right), the signs are considered visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘MONTESSORI’, forming the entire earlier mark and the first/initial verbal element of the contested sign. They differ in the pronunciation of the verbal element ‘Lifestyle’ in the contested sign. They also differ in the pronunciation of the contested sign’s additional verbal elements ‘Plus d’autonomie, plus de vie!’, if pronounced. Indeed, given the very small size an final position of the latter verbal elements, that they will not be understood by the relevant consumers and that consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75), the contested sign is likely to be pronounced simply as ‘Montessori Lifestyle’ when referred to by the relevant public.

Therefore, the signs are phonetically similar to an average degree.  

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The concepts of the two marks are similar to the extent that both contain the (lowly distinctive) concept of ‘Montessori’. However, they differ in the additional concepts conveyed by the (lowly distinctive) verbal element ‘Lifestyle’ and by the bird depiction in the contested sign. Therefore, the Opposition Division considers that the signs are conceptually similar to a low degree.

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 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, the degree of similarity between the marks and between the goods or services identified. 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 and 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The relevant goods and services are partly identical, partly similar at least to an average degree and partly dissimilar. The goods and services found to be identical and similar target the public at large and business customers with an average degree of attention.

The signs are visually and conceptually similar to a low degree and aurally similar to at least an average degree for the public under analysis, to the extent that they share the element ‘MONTESSORI’, which is the only element of the earlier mark and the initial verbal element of the contested sign.

As stated above in section c) of this decision, the earlier mark has a low level of distinctiveness. In any event, the Court has emphasised on several occasions that the finding of a weak distinctive character for the earlier mark does not preclude a finding that there is a likelihood of confusion in the present case. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The likelihood of confusion includes the risk of association, namely, when the public rather than directly confusing trade marks attribute them the same business origin. In this way, the consumer considers that the products/services come from the same undertaking, particularly believing that the contested mark is a mere variant of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the case at hand, in spite of the additional elements in the contested sign, namely, a weakly distinctive verbal element (‘Lifestyle’), a depiction of a bird, which albeit distinctive has a lower impact on the consumers than the verbal elements, and a slogan (‘Plus d’autonomie, plus de vie!’) which, due to its significantly smaller size and ancillary position in the contested sign, is overshadowed by the remaining elements and likely to be disregarded by the relevant public when pronouncing the sign, the Opposition Division considers that likelihood of confusion for goods and services which are identical or similar at least to an average degree cannot be safely disregarded.

In light of all the foregoing, taking also into account the principle of interdependence, it is likely that the relevant public may be misled into thinking that the identical or similar goods and services bearing the conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked. Indeed, the relevant public may legitimately believe that the contested mark is a new version or a brand variation of the earlier mark, ‘MONTESSORI’, originating from the same undertaking or from economically-linked undertakings.

The applicant contends in its observations that the earlier mark ‘evokes a technique of education of children‘ whereas the contested sign ‘is intended for elderly people with neurological or mental disabilities’ and ‘evokes an adaptation of the ‘MONTESSORI’ method intended for people seeking autonomy’. In this regard, the Opposition Division notes that the actual or intended use/commercial offering of the contested sign indicated by the applicant in its observations is not relevant when evaluating the existence of identity or similarity between the signs or the goods and services, only the sign and the goods and services as they appear on the register are of relevance. Consequently, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public to which this assessment is limited (i.e. the part of the Slovenian public for which ‘Lifestyle’ is meaningful). Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application for the goods and services found to be identical or similar, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Slovenian trade mark registration No 201 571 258.

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 those of the earlier trade mark.

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.

The opponent has also based its opposition on the earlier Slovenian trade mark No 201 570 509,  . This mark is less similar to the contested mark than the earlier mark which has been compared and covers the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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

 

 

Maria del Carmen COBOS PALOMO

Helena GRANADO CARPENTER

Alicia BLAYA ALGARRA

 

 

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.