OPPOSITION No B 3 118 380

Chambre de Metiers et de L’artisanat de Region Hauts-De-France, Place des Artisans, 59000 Lille, France (opponent), represented by Coraline Favrel, 41 rue des Arts, 59800, Lille, France (professional representative)

a g a i n s t

International Allied Management Group Co., Ltd., 125 Old Broad Street, London EC2N 1AR, United Kingdom (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 18/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 118 380 is rejected in its entirety.

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

REASONS

On 04/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 154 511 for the figurative mark , namely against some of the services in Class 35 and all of the services in Classes 41 and 42. The opposition is based on French trade mark registration No 4 499 498 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 35: Support or evaluation or development of entrepreneurial projects; business management; business administration; business organization and management consultancy; putting in touch with commercial or industrial partners or experts or sponsors; organization of exhibitions for commercial or advertising purposes; promotion of entrepreneurial projects; sponsorship; all of the aforementioned services being rendered in the agrifood sector.

Class 41: Education; training; entertainment; cultural activities; arranging and conducting of colloquiums, conferences or congresses; organization of exhibitions for cultural or educational purposes; organization of competitions; electronic publication of books and periodicals online; tutoring; all of the aforementioned services being rendered in the agrifood sector.

Class 42: Study of research work relating to products and processes; research and development of new products for others; technical project studies; food, beverage, wine and beer analysis, inspection and control services; all of the aforementioned services being rendered in the agrifood sector.

The contested services are the following:

Class 35: Business management assistance; agency services; marketing; telephone order-taking services for others; personnel management consultancy; search engine optimization for sales promotion; business auditing; sponsorship search; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Class 41: Organization of competitions [education or entertainment]; arranging and conducting of conferences; organization of sports competitions; arranging of beauty contests; arranging and conducting of concerts; organization of events for cultural purposes; publication of texts, other than publicity texts; layout services, other than for advertising purposes; modelling for artists; organization of lotteries.

Class 42: Research; research and development of new products for others; geological research; chemistry services; cosmetic research; biological research; meteorological information; material testing; computer software design; cloud computing.

Some of the contested services are identical (e.g. business management assistance; organization of sports competitions; research and development of new products for others) or similar (e.g. telephone order-taking services for others) 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 opponent, 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the business management, marketing, publishing and research sectors.

The degree of attention varies from average to high depending on the price, frequency of purchase, (specialised) nature and conditions of the services provided. Furthermore, the degree of attention may be higher, as some of these services may have an impact on the functioning of a business.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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

The earlier mark is the figurative mark composed of the verbal element ‘MiAM’, written in slightly fancy letters, namely upper-case (‘M’, ‘A’, ‘M’) and lower-case (‘i’) letters. Between the letters ‘M’ and ‘i’, there is a figurative element in the form of a carrot. All these elements are placed between two square brackets. The contested sign is a figurative mark composed of the letters ‘IAM’, written in fairly standard bold upper-case letters.

The verbal element ‘MiAM’ will be perceived in the same way as the English word ‘yummy’ and the carrot is perceived as such. Even though the verbal element of the earlier mark has a meaning, it has no particular relation to the relevant services and is distinctive. The figurative element in the form of a carrot is allusive to services rendered in the agrifood sector. Therefore, this element is at best weak. The brackets of the earlier mark are merely decorative and the public will pay less attention to this weak element, which, therefore, has less impact on the overall comparison.

At least part of the public will perceive the contested sign as a combination of three individual letters ‘IAM’, which as a whole forms a meaningless term and is distinctive. Another part of the public will perceive it as the English words ‘I AM’, with the meaning conveyed by this expression, which has no particular relation to the relevant services and is distinctive.

The Opposition Division considers that both the earlier mark and the contested sign have no element that could be considered clearly more dominant than other elements. The signs do not contain any components that due to their position, size, dimensions and/or use of colours would be visually outstanding in respect to others.

Visually, the signs coincide in the letters ‘*iAM’. The signs differ in the first letter, ‘M’, of the verbal element of the earlier mark, where consumers usually focus their attention first. Furthermore, the signs differ in the typefaces used, albeit fairly standard, and in the remaining figurative elements of the earlier mark, namely the carrot (at best weak) and the brackets (weak). None of these elements are shared by the contested sign.

The opponent referred to the fact that ‘The two word marks consist of a single term, three of the four letters of which are identical and placed in the same order, the only difference being the first letter ‘M’ of the first mark absent within the second’. However, even though this is true, the marks are not simple word marks, as at least the earlier mark is composed of many more elements.

In addition, the verbal element of the contested sign is composed of three letters, and is, consequently, a rather short mark and the verbal element of the earlier mark consists of four letters, which is also short. The fact that the verbal elements differ in only one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. This differing letter ‘M’ is also placed at beginning, which is normally more important, as explained above, and the earlier mark also contains some figurative elements.

Therefore, the signs are visually similar to a very low degree.

Aurally, the earlier mark is pronounced as ‘MIAM’, in one syllable, whereas the contested sign is pronounced either by pronouncing the letters ‘I’, ‘A’ and ‘M’ individually, or as ‘I‑AM’ (the latter by that part of the public that would understand the English wording).

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

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal and figurative element of the earlier mark as explained above, the other sign has no meaning in that territory for at least a part of the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for a part of the French public. For another part of the public that will perceive the English wording in the contested sign, as the signs will be associated with a dissimilar meaning, the signs are conceptually not 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 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 a purely decorative element (the brackets) and an at best weak element (the carrot), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods 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.

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 that 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. 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).

The services are assumed to be identical and target the public at large and a more professional public whose level of attention varies from average to high.

The marks are visually and aurally similar to a very low degree and conceptually not similar for the entire relevant public. The earlier mark as a whole has a normal degree of distinctiveness.

Indeed, the signs visually and aurally coincide in some letters, but they differ in the additional letter at the beginning, where consumers usually focus their attention, as well as in the figurative elements of the earlier mark, and in the entirely different typeface. Furthermore, at least the verbal element of the contested sign is short.

According to case-law, where one of the signs at issue has a clear and specific meaning that can be grasped immediately and the other has none, or where both signs have such a clear and specific meaning and these meanings are different, such conceptual differences between the signs may counteract their visual and phonetic similarity (12/01/2006, C‑361/04, Picaro, EU:C:2006:25, § 20).

Taking into account all relevant factors, it is considered that the conceptual dissimilarity produced by the two completely different meanings of the signs perceived by a part of the relevant public and by another part of the relevant public that perceives only the clear meaning of the verbal element and the figurative element of the earlier mark, reinforced by the very low degree of visual and aural similarity, outweigh the visual and aural similarities, and will enable the relevant public to safely distinguish between the signs.

Consequently, and given the differences between the signs, which create a sufficient difference between the overall impressions of the signs, the Opposition Division does not find it plausible that the relevant consumer, who will be reasonably observant and circumspect, might believe that the services assumed to be identical come from the same undertaking or economically linked undertakings. This applies even more for the public that pays a higher degree of attention.

Therefore, the dissimilarities are sufficient to safely exclude a likelihood of confusion including a likelihood of association. It can reasonably be concluded that consumers will clearly be able to distinguish between the marks and will perceive them as coming from different undertakings.

Considering all the above, and even assuming the identity between the services, there is no likelihood of confusion on the part of the relevant public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it 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

Saida CRABBE

Chantal VAN RIEL

Marta GARCÍA COLLADO

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.