OPPOSITION Nо B 3 113 131

Caroline de la Palme, 32 Rue Mathurin Regnier, 75015 Paris, France (opponent), represented by Clery Devernay, 9, Avenue Percier, 75008 Paris-8E-Arrondissement, France (professional representative)

a g a i n s t

Timo Simon, Wallensteinplatz 1, 80807 München, Germany (applicant), represented by Loschelderleisenberg Rechtsanwälte, Franz-Joseph-Straße 35, 80801 München, Germany (professional representative).

On 22/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 113 131 is upheld for all the contested services, namely:

Class 41: Coaching; personal coaching [training]; organisation of teaching activities; arranging and conducting of workshops [training]; conducting courses, seminars and workshops; arranging, conducting and organisation of workshops; consultancy and information services relating to arranging, conducting and organisation of workshops; personal development training; personal development courses; conducting workshops and seminars in self awareness; provision of training courses; organisation of training; recreation information; arranging and conducting of conferences; arranging and conducting educational conferences; organisation of congresses and conferences for cultural and educational purposes; arranging and conducting of educational courses; providing video entertainment via a website; providing online videos, not downloadable; correspondence courses, distance learning; arranging and conducting of lectures for educational purposes; arranging and conducting of lectures for training purposes; providing multi-media entertainment via a website; arranging and conducting of training courses; vocational guidance [education or training advice]; career counselling and coaching; arranging and conducting of educational discussion groups, not on-line; cultural services; providing recreation facilities.

Class 45: Online social networking services; online social networking services accessible by means of downloadable mobile applications.

2. European Union trade mark application No 18 157 603 is rejected for all the contested services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 03/03/2020, the opponent filed an opposition against some of the services of European Union trade mark application No 18 157 603 (figurative mark), namely against all the services in Class 41 and some of the services in Class 45. The opposition is based on French trade mark registration No 4 521 264 (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 38: Communications by computer terminals; communications by fibre optic networks; electronic messaging.

Class 41: Teaching; coaching; entertainment services; sporting and cultural activities; entertainment information; education information; providing recreation facilities; publication of books; providing films, not downloadable, via video-on-demand services; production of cinematographic films; lease of scenery; photography; arranging of contests; arranging and conducting of colloquiums; arranging and conducting of conferences; arranging and conducting of congresses; arranging of exhibitions for cultural or educational purposes; booking of seats for shows; gambling services; online publication of electronic books and journals.

The contested services are the following:

Class 41: Coaching; personal coaching [training]; organisation of teaching activities; arranging and conducting of workshops [training]; conducting courses, seminars and workshops; arranging, conducting and organisation of workshops; consultancy and information services relating to arranging, conducting and organisation of workshops; personal development training; personal development courses; conducting workshops and seminars in self awareness; provision of training courses; organisation of training; recreation information; arranging and conducting of conferences; arranging and conducting educational conferences; organisation of congresses and conferences for cultural and educational purposes; arranging and conducting of educational courses; providing video entertainment via a website; providing online videos, not downloadable; correspondence courses, distance learning; arranging and conducting of lectures for educational purposes; arranging and conducting of lectures for training purposes; providing multi-media entertainment via a website; arranging and conducting of training courses; vocational guidance [education or training advice]; career counselling and coaching; arranging and conducting of educational discussion groups, not on-line; cultural services; providing recreation facilities.

Class 45: Online social networking services; online social networking services accessible by means of downloadable mobile applications.

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 services in Class 41

Coaching; providing recreation facilities; arranging and conducting of conferences are identically contained in both lists of services (including synonyms).

The contested personal coaching [training]; organisation of teaching activities; arranging and conducting of workshops [training]; conducting courses, seminars and workshops; arranging, conducting and organisation of workshops; consultancy and information services relating to arranging, conducting and organisation of workshops; personal development training; personal development courses; conducting workshops and seminars in self awareness; provision of training courses; organisation of training; arranging and conducting of educational courses; correspondence courses, distance learning; arranging and conducting of lectures for educational purposes; arranging and conducting of lectures for training purposes; arranging and conducting of training courses; vocational guidance [education or training advice]; career counselling and coaching; arranging and conducting of educational discussion groups, not on-line are included in the broad categories of, or overlap with, the opponent’s teaching; coaching. Therefore, they are identical.

The contested arranging and conducting educational conferences; organisation of congresses and conferences for cultural and educational purposes are included in the broad category of, or overlap with, the opponent’s arranging and conducting of conferences. Therefore, they are identical.

The contested providing video entertainment via a website; providing online videos, not downloadable; providing multi-media entertainment via a website are included in the broad category of, or overlap with, the opponent’s entertainment services. Therefore, they are identical.

The contested recreation information is included in the broad category of, or overlaps with, the opponent’s providing recreation facilities. Therefore, they are identical.

The contested cultural services include, as a broader category, or overlap with, the opponent’s cultural activities. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 45

The contested online social networking services; online social networking services accessible by means of downloadable mobile applications are similar to the opponent’s communications by computer terminals in Class 38. The contested services provide an online platform for exchanging information, text, images and other online content. These services are closely related to telecommunications as they serve the same purpose, target the same public, can be provided by the same service provider and are complementary.

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 similar are directed at the public at large and at customers with specific professional knowledge or expertise.

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

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 common verbal element ‘good vibes’ has no meaning for the relevant public and is, therefore, distinctive. However, it cannot be excluded that part of the public will perceive this verbal element as a meaningful expression in English, signifying ‘good vibrations; good atmosphere’ (information extracted from Oxford English Dictionary on 11/03/2021 at https://www.oed.com/view/Entry/223044?rskey=MCrUYx&result=1&isAdvanced=false#eid and https://www.oed.com/view/Entry/223061#eid15516494).

The rest of the relevant public will not perceive a meaning in the common component ‘vibes’. The common component ‘good’, however, is a very basic English word and will be understood as ‘having the required qualities; possessing or displaying moral virtue’.

As both signs have the same verbal components, they have an equal degree of distinctiveness. While the distinctiveness of the signs’ elements is, as a rule, relevant for their comparison, in this case, it is irrelevant whether the signs or their components will be perceived as having a low degree of distinctiveness in relation to some of the relevant services. This is because the public will perceive these elements/components identically in both signs.

The decisive factor in this comparison will be the impact of the differing elements: the stylisation of the signs’ verbal elements (which will merely be perceived as a graphical means of bringing the verbal elements to the attention of the public and, therefore, has a limited impact on the comparison); and the earlier mark’s colours (which are decorative). The contested sign’s figurative device, which part of the public might see as a stylised letter ‘G’, depicted above ‘good vibes’, will simply be perceived as a means of enhancing the sign’s verbal element. Consequently, it is unlikely to even be pronounced.

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).

Neither sign has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘good vibes’. They differ in their colours, rather standard stylisations, and use of upper-case and lower-case letters. They also differ in their additional figurative elements, including the letter ‘G’, which are considered to have less impact.

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

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public in the relevant territory, only the component ‘good’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree. For the rest of the public, the signs are conceptually identical.

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 must be seen as normal.

e) Global assessment, other arguments and conclusion

According to case-law, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The services are partly identical and partly similar. They target the public at large and consumers with specific professional knowledge or expertise. The degree of attentiveness may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to an average degree, aurally identical and conceptually either identical or similar to an average degree. In particular, the marks coincide in their verbal element ‘good vibes’, which constitutes the earlier mark’s only verbal element and is reproduced in its entirety in the contested sign.

The signs differ in their stylisation and colours, which have less impact. They also differ in the additional figurative elements, including the contested sign’s stylised letter ‘G’, which is unlikely to be pronounced and will simply reinforce the verbal element. These differences do not significantly affect the visual and conceptual similarities and aural (and for part of the public conceptual) identity of the signs. Therefore, they cannot outweigh the similarity between the signs, and they are not sufficient to exclude a likelihood of confusion.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Consequently, the signs’ aural and (for part of the public) conceptual identity compensates for the lower degree of similarity between some of the services.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates, for example a new line of social networking services (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 French trade mark registration No 4 521 264. It follows that the contested trade mark must be rejected for all the contested 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 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

Valeria ANCHINI

Tzvetelina IANTCHEVA

Biruté SATAITE-GONZALEZ

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.