OPPOSITION No B 3 102 346

Alexandra Sperschneider, Leibnizstr. 6, 95447 Bayreuth, Germany and Jürgen Pröll, Leibnizstr. 6, 95447 Bayreuth, Germany (opponents), represented by Die Patenterie GbR, Nürnberger Straße 19, 95447 Bayreuth, Germany (professional representative)

a g a i n s t

Patently Limited, Fairfax House, 15 Fulwood Place, WC1V 6HU London, United Kingdom (applicant), represented by EIP, Fairfax House 15 Fulwood Place, London WC1V 6HU, United Kingdom (professional representative).

On 16/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 346 is rejected in its entirety.

2. The opponents bears the costs, fixed at EUR 300.

REASONS

The opponents filed an opposition against some of the services of European Union trade mark application No 18 098 007 (figurative mark), namely against all the services in Classes 35 and 45. The opposition is based, inter alia, on European Union trade mark registration No 13 981 683 ‘Die Patenterie’ (word mark). The opponents 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 opponents’ European Union trade mark registration No 13 981 683.

a) The services

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

Class 35: Office functions for monitoring and handling payment of intellectual property right fees, for others.

Class 41: Translation; arranging and conducting of seminars in the field of industrial property rights, copyrights, competition law and employee inventor rights.

Class 45: Patent attorney services; intellectual property consultancy; litigation services; solicitors' services; mediation; monitoring intellectual property rights for legal advisory purposes; consultancy and representation in matters relating to industrial property rights, copyrights, competition law and employee inventor rights; legal services, in particular consultancy and representation in matters relating to contract law or licensing rights; patent law and/or legal examination, assessment and evaluation of intellectual property rights.

The contested services are the following:

Class 35: Business advisory, consultancy and information services in relation to the development and management of intellectual property rights; business advisory, consultancy and information services in relation to technology exploitation and technology commercialisation; electronic data processing services in the field of intellectual property rights and technology; compilation of information onto computer databases; compilation of intellectual property information onto computer databases; collection and systematisation of information into computer databases; collection and systematisation of information relating to patents, registered designs, utility models and trademarks into computer databases; database management services; preparing expert evaluations and reports relating to business matters and market analysis in the field of intellectual property landscapes.

Class 45: Providing bibliographic information relating to patents and patent applications via online databases; preparing legal reports featuring intellectual property information; providing information in the field of patents and patent applications via a searchable online database; providing information in the legal field of intellectual property related to utility models, registered designs and trademarks via a searchable online database; providing information in the field of intellectual property; intellectual property advisory services; monitoring intellectual property rights for legal advisory services.

Some of the contested services are identical (e.g. the contested monitoring intellectual property rights for legal advisory services and the opponents’ monitoring intellectual property rights for legal advisory purposes are identical despite the slight difference in wording) 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 opponents, 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 deemed to be identical are directed at the public at large (e.g. office functions) and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services required by the public and the impact and consequences that such services may cause for them and for their business.

c) The signs

Die Patenterie
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark composed of the words ‘Die Patenterie’. The verbal element 'Die' is a definite article in German, meaning ‘the’, whereas ‘Patenterie’ does not exist as such in German. Yet, given that consumers, when perceiving a verbal 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 Opposition Division considers that the German-speaking part of the public will break ‘Patenterie’ down into two elements, namely ‘Patent’ which designates ‘(officially guaranteed) right to exclusive use and commercial exploitation of an invention; patent protection’ (information extracted from German Duden Dictionary on 07/12/2020 at https://www.duden.de/rechtschreibung/Patent), on the one hand, and ‘-erie’ which is the French suffix that is also used in German, for instance in the imported French word patisserie (a shop where cakes and pastries are made and sold), to refer to the place where particular goods can be bought. Therefore, the German-speaking part of the public will perceive the earlier mark as a whole as referring to the place where one can obtain patents and bearing in mind that the relevant services are all related to, or can have as an object, intellectual property rights such as patents (e.g. collection and systematisation of information relating to patents; patent attorney services), the expression “Die Patenterie” as a whole is weak for this part of the public. Likewise, other parts of the public will recognise at least ‘Patent’ in the earlier mark, for instance the English-speaking part of the public, and bearing in mind the relevant services, at least this element is weak.

Similarly, although the English word ‘Patently’ in the contested sign means ‘obviously; in a way that is easy to see or understand; evidently’ (information extracted from English Collins Dictionary on 01/12/2020 at https://www.collinsdictionary.com/dictionary/english/patently), the Opposition Division considers that in context with the relevant services, a significant part of the relevant public which includes the English- and the German-speaking parts, will perceive the element ‘Patent’ in this word and associate it with the exclusive right described above. As a consequence, for these parts of the public, the element ‘Patent’ is at best, of weak distinctive character, for the relevant services.

Yet, for those parts of the public for which neither ‘Die’ nor ‘Patenterie’ in the earlier mark have a meaning and ‘Patently’ in the contested sign has no meaning either, such as the Hungarian-speaking part of the public, these elements are all distinctive to a normal degree.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences lay in distinctive elements, the Opposition Division will assess the signs from the perspective of the part of the public for which ‘Die Patenterie’ and ‘Patently’ are meaningless such as the Hungarian-speaking part, and for which these elements have a normal degree of distinctiveness for all the relevant services as this is the most advantageous scenario for the opponents.

The contested sign contains a graphical representation of a rectangular frame with one folded corner, which may be perceived by parts of the relevant public as a representation of a sheet of paper. In any event it should 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).

Finally, it should be noted 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 letters ‘*-*-* P-a-t-e-n-t-*-*-*-*’. However, they differ in the figurative elements of the contested sign, the initial verbal element ‘D-i-e’, and in the last letters ‘e-r-i-e’ of the earlier mark as well as the last letters ‘l-y’ in the contested sign. Moreover, the signs are of significantly different length, thirteen vs eight letters, respectively, and consist of two words and only one word preceded by a device, respectively.

Therefore, and taking into account that consumers generally tend to focus on the beginning of a sign, as explained above, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘*-*-* P-a-t-e-n-t-*-*-*-*’, present identically in both signs. The pronunciation differs in the sound of the letters ‘e-r-i-e’ of the earlier mark and ‘l-y’ of the contested sign, and in the sound of the first verbal element ‘D-i-e’ of the earlier mark, which has no counterpart in the contested sign. Moreover, the signs are of different lengths and have a different rhythm.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public under analysis will perceive the meaning of the figurative element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 opponents did not explicitly claim that their 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. The distinctiveness of the earlier mark taken as a whole is normal.

e) Global assessment, other arguments and conclusion

The services are assumed to be identical and are directed at the public at large as well as business customers with specific professional knowledge or expertise, whose degree of attention may vary from average to high.

The marks are visually and aurally similar to a low degree and the signs are not conceptually similar. The earlier mark as a whole enjoys a normal degree of distinctiveness.

As seen above, the signs only coincide in the letters ‘*-*-* P-a-t-e-n-t-*-*-*-*’, but differ in their composition (two words vs a device followed by a single word), in their beginnings - given the presence of the initial word ‘Die’ in the earlier mark -, and in their endings: ‘e-r-i-e’ and ‘l-y’ respectively. Moreover, the signs are of significantly different lengths and their pronunciation differs in rhythm and intonation. Therefore, the Opposition Division considers that the similarities between the signs are not sufficient to outweigh their differences.

The opponents refer to previous decisions of the Office to support their arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponents (05/05/2015, T‑183/13, SKYPE / SKY et al., EU:T:2015:259; 05/05/2015, T 423/12, Skype / SKY et al., EU:T:2015:260) are not relevant to the present proceeding because in all these cases, the earlier mark is included entirely at the beginning of the contested signs, which is not the case in the present opposition.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public for which ‘Die Patenterie’ and ‘Patently’ are meaningless.

This absence of a likelihood of confusion equally applies to the part of the public that will associate ‘Die Patenterie’ and ‘Patently’ with meanings. Indeed, for this part of the public, given the low degree of distinctiveness of the common element ‘Patent’, the differences between the signs carry more weight in the perception of each sign and outweigh the similarities that lay in this weak element. Even if there would be a low degree of conceptual similarity for this part of the public, it would stem from the element with weak distinctive character.

The opponents also based their opposition on the following earlier trade mark:

 European Union trade mark registration No 14 444 491 for the figurative mark , registered for goods in Classes 35, 41 and 45.

The other earlier right invoked by the opponents is even less similar to the contested mark because it contains figurative elements and additional words such as ‘Patent- und Rechtsanwalts- sozietät’, which are not present in the contested trade mark. Moreover, they cover the same scope of the services which already have been deemed to be identical to the contested sign. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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.

Since the opponents are the losing party, they 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

Holger KUNZ

Claudia SCHLIE

Martina GALLE

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.