OPPOSITION No B 3 105 683

Organización Nacional de Ciegos Españoles (ONCE), Prado, 24, 28014 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Mind&Move, via Lamarmora 16, 10100 Torino, Italy (applicant).

On 22/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 683 is upheld for all the contested services.

2. European Union trade mark application No 18 124 108 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 18 124 108 for the figurative mark below: .

The opposition is based on, inter alia, Spanish trade mark registration No 2 653 383 and No 3 027 155 for the word ‘ONCE’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Spanish trade mark registration No 2 653 383 and No 3 027 155.

a) The services

The services on which the opposition is based are, inter alia, the following:

ES 2 653 383:

Class 41: Educational and entertainment services.

Class 42: Services of engineers or professionals with university training, research, projects, evaluations, appraisals or reports, services rendered by organizations to its own members.

ES 3 027 155:

Class 44: Health care services; health and beauty services provided by persons or establishments to persons or animals.

Class 45: Personal and social services rendered by others to meet the needs of individuals; Security services for the protection of property and individuals. Investigation and Surveillance services regarding to security of people and community.

The contested services are the following:

Class 41: Education, entertainment and sport services; Education, entertainment and sports.

Class 42: Design services; Scientific technological services.

Class 44: Human hygiene and beauty care; Human healthcare services.

Class 45: Safety, rescue, security and enforcement services; Provision of emotional support to families; Consulting in the field of personal relationships.

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 services in Class 41

The contested education and entertainment are identically contained in the opponent’s lists of services in Class 41 (although worded slightly differently).

The contested sport services and sports are similar to the opponent’s entertainment services in Class 41. The services under comparison have the same purpose and they usually coincide in the relevant public and distribution channels.

Contested services in Class 42

The contested design services are at least similar to the opponent’s services of engineers or professionals with university training, research, projects, evaluations, appraisals or reports in Class 42 as they may target the same relevant public, have the same providers and distribution channels.

The contested scientific technological services are included in the broad category of the opponent’s services of engineers or professionals with university training, research, projects, evaluations, appraisals or reports in Class 42. Therefore, they are identical.

Contested services in Class 44

The contested human hygiene and beauty care and the opponent’s beauty services provided by persons or establishments to persons in Class 44 are identical either because they are identically contained in both lists (including synonyms) or because the opponent’s services overlap with the contested services, or they are at least highly similar. The services under comparison have the same purpose insofar as they aim at maintaining the attractive appearance of a human being. They have at least a similar nature and method of use and are usually provided by the same undertakings and through the same distribution channels to the same consumers.

The contested human healthcare services are identical to the opponent’s health services provided by persons or establishments to persons in Class 44, despite some minor variations of wording.

Contested services in Class 45

The contested safety, rescue, security and enforcement services and the opponent’s security services for the protection of property and individuals in Class 45 are identical either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, or overlap with the contested services, or they are at least similar. The services under comparison have the same purpose insofar as they aim at the protection of tangible property and individuals. They may be provided by the same undertakings and through the same distribution channels to the same consumers

The contested provision of emotional support to families; consulting in the field of personal relationships are included in the broad category of, or overlap with, the opponent’s personal and social services rendered by others to meet the needs of individuals in Class 45. Therefore, they are identical.

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 found to be identical or (at least) similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary between average and higher than average, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

ONCE
Earlier trade marks	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are composed of the word ‘ONCE’ which means ‘eleven’ in Spanish. As this word is not clearly related to the relevant services, it is distinctive to a normal degree for them.

The contested sign is composed of a figurative element which does not convey any clear meaning and a verbal element ‘I∙once’ positioned below. Given that the abbreviation ‘I’ adjoined to a meaningful word is used as a common acronym for internet, it may be perceived as indicating that the relevant services are accessible through electronic communication or provided online. Consequently, the component ‘I’ of the contested sign is non-distinctive (19/04/2004, R 758/2002-2, ITUNES, § 11-12). The dot between the letter ‘I’ and the word ‘once’ serves to separate these elements. It is non-distinctive and cannot indicate the commercial origin. The word ‘once’, separated from the component ‘I’, will be identified in the contested sign with a meaning mentioned above. As it is not clearly related to the relevant services, it is a distinctive element of the contested sign.

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). The figurative element of the contested sign does not overshadow the verbal elements of the mark. The graphical representation of the letters limited to their representation in standard coloured font is non-distinctive.

The signs have no elements that could be considered clearly visually dominant (the

most eye-catching).

Visually, the signs coincide in the word ‘ONCE’ which is the only element of the earlier distinctive marks. They differ in the additional elements of the contested sign, namely the element ‘I’, followed by a dot before the word ‘once’, the graphical representation of the letters, colours and the figurative element above the verbal elements. These elements of difference have less impact for the reasons explained above. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛ONCE’ and differs in the sound of the component ‛I’ of the contested sign, which has no counterpart in the earlier marks. The coinciding word ‘ONCE’ is the only element of the earlier marks and the distinctive element of the contested sign. The differing component ‘I’ of the contested sign is likely to be pronounced. However, it is non-distinctive. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs contain the meaningful distinctive element ‘ONCE’. The additional concept of internet evoked by the component ‘I’ of the contested sign is non-distinctive and does not have a significant influence. The figurative element of the contested sign does not convey any clear and unambiguous concept.

Therefore, the signs are conceptually similar to a high 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) Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning clearly related to the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The services are identical, (at least) similar or highly similar.

The signs are visually similar to an average degree and aurally and conceptually similar to a high degree.

The degree of distinctiveness of the earlier marks is normal. The public’s degree of attentiveness may vary between average and higher than average.

The coinciding element ‘ONCE’ is the sole element of the earlier mark. The coincidence in this element results in an average degree of visual similarity and a high degree of aural and conceptual similarity as the differences are confined to the elements that have less impact. Therefore, the consumers, even if their level of attention is heightened, may be led to believe that the identical or (at least) highly similar or similar services originate from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 653 383 and No 3 027 155. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Spanish trade mark registration No 2 653 383 and No 3 027 155 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Julia GARCÍA MURILLO

Justyna GBYL

Aldo BLASI

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.