OPPOSITION No B 3 108 109

Horacio Renna Valdes, Numancia, 85, 10º 1ª, 08029 Barcelona, Spain (opponent), represented by Durán Cuevas, S.L.P., Paseo de Gracia, 110, 1°, 1ª,
08008 Barcelona, Spain (professional representative)

a g a i n s t

nGAGE Specialist recruitment GmbH, Krausenstrasse 9 – 10, 10117 Berlin, Germany (applicant), represented by Deloitte Legal Rechtsanwaltsgesellschaft mbH, Magnusstraße 11, 50672 Köln, Germany (professional representative).

On 19/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 109 is upheld for all the contested services.

2. European Union trade mark application No 18 136 221 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 (in Class 35) of European Union trade mark application No 18 136 221 (figurative mark: ‘ ’). The opposition is based on, inter alia, Spanish trade mark registration No 3 717 624 (figurative mark: ‘ ). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR (see the Office´s letter of 26/08/2020).

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 3 717 624.

a) The services

The services in Classes 35 on which the opposition is based are, inter alia, the following:

Advertising, marketing and promotional services; business management; business administration; office functions; promotional, marketing and advertising consultancy, advisory and assistance services; market campaigns; development of promotional campaigns; dissemination of marketing and advertising materials; development and implementation of marketing strategies for others; production of sound recordings for marketing purposes; producing promotional videotapes, video discs, and audio visual recordings; preparation and presentation of audio visual displays for promotional and advertising purposes; sales promotion for others; promotion [advertising] of concerts, shows and events; arranging and conducting of marketing events; arranging of events, exhibitions, fairs and shows for business, promotional and advertising purposes; organisation, operation and supervision of sales and promotional incentive schemes; promoting the goods and services of others; promotion of goods and services through sponsorship of sports events; production of advertising material; production of advertising films; sales management services; business intermediary and advisory services in the field of selling products and rendering services; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to events; commercial administration of the licensing of the goods and services of others; sponsorship search; consultancy regarding advertising communication strategies; consultancy regarding public relations communication strategies; presentation of goods on communication media, for retail purposes; electronic commerce services, namely, providing information about products via telecommunication networks for marketing and sales purposes.

The contested services in Class 35 are the following:

Management advice relating to the recruitment of staff; management advice relating to the placing of staff; office support staff recruitment services; permanent staff recruitment; recruitment services for sales and marketing personnel; recruitment of temporary technical personnel; job and personnel placement; consultancy and advisory services relating to personnel recruitment; advisory services relating to personnel placement; job placement consultancy; consultancy relating to the selection of personnel; personnel management consultancy; consultancy and advisory services relating to personnel management; career planning consultancy; consultancy of personnel recruitment; human resources consultancy; headhunting services; personnel recruitment agency services; interviewing services [for personnel recruitment]; evaluation of personnel requirements; professional recruitment services; assistance relating to recruitment and placement of staff; job matching services; employment agency services; personnel recruitment; personnel consultancy; personnel placement and recruitment; personnel management; personnel management assistance; employment counselling and consultancy services; business recruitment consultancy; business advisory services provided to determine pay and grading structures; personnel placement; providing temporary office support staff; advertising, marketing and promotional consultancy, advisory and assistance services; advertising and marketing consultancy; marketing; advertising.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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.

The contested management advice relating to the recruitment of staff; management advice relating to the placing of staff; office support staff recruitment services; permanent staff recruitment; recruitment services for sales and marketing personnel; recruitment of temporary technical personnel; job and personnel placement; consultancy and advisory services relating to personnel recruitment; advisory services relating to personnel placement; job placement consultancy; consultancy relating to the selection of personnel; personnel management consultancy; consultancy and advisory services relating to personnel management; career planning consultancy; consultancy of personnel recruitment; human resources consultancy; headhunting services; personnel recruitment agency services; interviewing services [for personnel recruitment]; evaluation of personnel requirements; professional recruitment services; assistance relating to recruitment and placement of staff; job matching services; employment agency services; personnel recruitment; personnel consultancy; personnel placement and recruitment; personnel management; personnel management assistance; employment counselling and consultancy services; business recruitment consultancy; business advisory services provided to determine pay and grading structures; personnel placement; providing temporary office support staff are identical to the opponent’s business management; business administration 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. However, they are at least similar because they have the same distribution channels, public and provider.

The remaining contested advertising, marketing and promotional consultancy, advisory and assistance services; advertising and marketing consultancy; marketing; advertising are identical to the opponent’s advertising, marketing and promotional services, 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.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services purchased.

c) The signs

Earlier trade mark	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).

Both signs are figurative marks.

The figurative element of the earlier trade mark is the word ‘PROACTIV’ in italic bold upper-case letters, with a figure standing on one hand as the dot of the ‘i’. The colour of the mark gradually changes from blue to red as the word progresses.

The figurative element of the contested sign comprises the words ‘pro’ and ‘active’, each in a different shade of blue, with a circle, which is the same light blue as the second verbal element, around the letter ‘r’. Under the word ‘active’, there is the word combination ‘technical recruitment’, which is written in a much smaller size.

The Spanish public will understand the very similar elements ‘PROACTIV/proactive’ as a whole because the equivalent proactivo exists in Spanish and it will be understood with the meaning ‘(of a person or action) creating or controlling a situation rather than just responding to it after it has happened (information extracted from lexico on 18/01/2021 at www.lexico.com/definition/proactive). Therefore, bearing in mind that the relevant services are, inter alia, the class headings in Class 35, these elements are weak because they are associated with this kind of intervention.

The word combination ‘technical recruitment’ of the contested sign will be associated at least by a relevant part of the Spanish public (professionals in the recruitment sector) with this meaning as such. Bearing in mind that the relevant services are intended for ‘recruitment’, this element is non-distinctive for part of these services, such as office support staff recruitment services; permanent staff recruitment; recruitment services for sales and marketing personnel; recruitment of temporary technical personnel; job and personnel placement; consultancy and advisory services relating to personnel recruitment. For other services, it has a normal degree of distinctiveness.

The graphic features of the marks have a limited impact, as the stylisation of the words ‘PROACTIV/proactive’ is rather common and the device in the earlier mark is not particularly eye-catching.

The elements ‘PROACTIV/proactive’ are the dominant elements in their respective signs as they are the most eye-catching.

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).

Visually, the signs differ in their abovementioned figurative elements. However, the graphic features of the marks have a limited impact (see above). The only word element of the earlier trade mark ‘PROACTIV’ is completely included in the contested sign. The additional letter ‘e’ at the end of the contested sign, the additional word combination ‘technical recruitment’, which is written much smaller, and the fact, that ‘proactive’ is weak, cannot avoid an average degree of visual similarity.

Aurally, as the Spanish speaking public will perceive both signs as the same word, it is most likely that it will be pronounce in the same way. The word combination ‘technical recruitment’ is not likely to be pronounced, due to its size, font and colour. Therefore, the signs are at least aurally similar to an above-average degree, even taking into account that these nearly identical verbal elements are weak.

Conceptually, the elements ‘proactiv/proactive’ have the same meaning in both signs, although they are weak. A figure standing on one hand in the earlier trade mark supports the meaning of the verbal element in a decorative way. The word combination ‘technical recruitment’ of the contested sign is non-distinctive for some of the services in the contested sign. Therefore, the signs are conceptually similar to an above-average degree. The degree of similarity is slightly less, when the word combination ‘technical recruitment’ of the contested sign is distinctive for some of the services concerned.

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, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). 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; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the average degree of visual similarity, the above average degree of aural and conceptual similarity, the fact the dominant elements of both signs are nearly the same, the average degree of distinctiveness of the earlier trade mark and the identity or similarity of the services, there is – even for the part of the public with a high degree of attention – a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld. This applies even more, when the public’s degree of attentiveness is only average.

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly. They will be perceived as coming from the same or economically linked undertakings as the overall impressions of the signs have to be compared. The dominant verbal elements in both signs are nearly identical. Even though they are weak, this cannot automatically exclude a likelihood of confusion, as incorrectly mentioned by the applicant, because the signs have relevant visual, aural and conceptual similarities. Furthermore, the degree of distinctiveness of the earlier trade mark in its entirety is normal, despite having some weak elements.

The opposition is well founded under Article 8(1)(b) EUTMR.

As the earlier right ‘ ’ 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).

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

Gonzalo BILBAO TEJADA

Peter QUAY

Claudia MARTINI

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.