OPPOSITION Nо B 3 116 505

 

IMD International Institute for Management Development, 23, Chemin de Bellerive, 1007 Lausanne, Switzerland (opponent), represented by AWA Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative) 

 

a g a i n s t

 

MTM Förening i Norden, Stenbocksv 12, 54148 Skövde, Sweden (applicant).

On 10/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 116 505 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 197 505 is rejected in its entirety.

 

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

 

REASONS

 

On 21/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 197 505 'IMD-EWD' (word mark), namely against all the goods and services in Classes 9 and 41. The opposition is based on International trade mark registration designating the European Union No 1 353 876 (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 goods and services

 

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

 

Class 9: Downloadable software in the form of software and micro-software for computers, laptops, tablets and smartphones.

Class 41: Provision of seminars, lectures, educational and training programs through Internet courses.

The contested goods and services are the following:

Class 9: Interactive software.

Class 41: Provision of training courses; Educational examination; Computer training; Teaching; Practical training [demonstration]; Educational research; Academies [education]; Educational seminars; Education information; Educational testing.

Contested goods in Class 9

The contested interactive software is overlaps with the opponent’s downloadable software in the form of software and micro-software for computers, laptops, tablets and smartphones. Therefore, they are identical.

Contested services in Class 41

The contested provision of training courses; educational examination; computer training; teaching; practical training [demonstration]; educational research; academies [education]; educational seminars; education information; educational testing include, as broader categories, or overlap with, the opponent’s provision of seminars, lectures, educational and training programs through Internet courses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s 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 goods and services found to be identical are directed at the public at large and professionals (e.g. from the education field).

The degree of attention is considered to be average.

 

c) The signs

	IMD-EWD
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).

 

The earlier mark is a figurative mark composed of the combined letters ‘IMD’, in blue bold uppercase slightly stylised typescript (letters 'M' and 'D' are joined), the verbal elements ‘REAL LEARNING. REAL IMPACT’, placed below ‘IMD’ and depicted in black standard uppercase letters in at least six times smaller size, and a figurative element, placed over 'IMD', consisting of a combination of geometrical shapes which may be perceived as meaningless or as the stylised representation of half of a flower or a sun. The contested sign is a word mark composed of the combined letters ‘IMD’ and ‘EWD’ separated by a hyphen.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The verbal elements ‘‘REAL LEARNING. REAL IMPACT’ of the earlier mark are meaningful for the English-speaking part of the public in the relevant territory. In order to take into account the semantic content of these elements, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

The coinciding letter combination ‘IMD’ will be perceived as a verbal element with no immediately recognizable meaning for the goods and services at issue. Therefore, it has a normal distinctive character.

The second set of letters of the contested sign, ‘EWD’, is also meaningless and has, therefore, a normal distinctive character. The contested sign has no dominant elements since, by definition, word marks are written in standard typeface.

Punctuation marks, such as the hyphen of the contested sign and the full stop in the earlier mark, are not particularly distinctive.

The verbal elements ‘REAL LEARNING. REAL IMPACT’ of the earlier mark will be perceived as a promotional laudatory slogan indicating that the relevant goods and services provide actual learning with an objective impact, they are, thus, non-distinctive. Furthermore, this slogan is depicted in standard letters which are much smaller than the verbal element ‘IMD’ and is placed in the lower part of the earlier mark. Therefore, it is a secondary element within the earlier mark.

As stated above, the figurative element of the earlier mark may be perceived as meaningless or as the stylised representation of half of a flower or a sun. Since these possible conceptual connotations do not describe any characteristic of the goods and services in question, its distinctiveness is normal. Furthermore, because of its size and position, and of the secondary importance (much smaller size and non-distinctive character) of the slogan, the figurative element and the verbal element ‘IMD’ are codominant in the earlier mark.

However, 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). Therefore, even if the figurative element of the earlier mark is distinctive, the public will use the verbal element ‘IMD’ to refer to it.

Visually, the signs coincide in the distinctive sequence of letters ‘IMD’, which constitutes the earlier mark’s first and dominant verbal element and the contested sign’s first element. However, the signs differ in the hyphen and second verbal element ('EWD') of the contested sign, as well as in the slight stylisation of 'IMD' in the earlier mark and in its non-distinctive and secondary laudatory slogan (‘REAL LEARNING. REAL IMPACT’). The signs also differ in the earlier mark’s figurative element, but this cannot be attributed more weight than the distinctive and clearly legible verbal element ‘IMD’, since the figurative element will not divert the consumers’ attention away from this verbal element.

Although punctuation marks are not particularly distinctive (15/02/2019, R 1298/2018-4, So...? / S.O., § 47), in this case, the hyphen of the contested sign serves to visually separate the verbal elements, ‘IMD’ and ‘EWD’, thereby emphasizing the similarity between the signs on account of the identical initial element ‘IMD’.

It is also relevant to note 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 and from top to bottom, which makes the part placed at the left and/or top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, although the top element in the earlier mark is a figurative element, this element has been considered to have less impact than the subsequent verbal element, for the reasons explained above. In addition, consumers will clearly perceive and focus on the verbal element ‘IMD’, which has a larger size that the figurative element and is the verbal element that will allow them to identify the mark.

Therefore, and taking into account the conclusions regarding the distinctiveness and the impact of the elements, the signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IMD’, present identically as the initial/top verbal elements in both signs. The pronunciation differs in the sound of the contested sign’s second verbal element ‘EWD’. It also differs in the sound of the earlier mark’s verbal elements ‘REAL LEARNING. REAL IMPACT’, which have a secondary impact as explained above, and may even not be pronounced. Indeed, given that these additional elements in the earlier mark form a non-distinctive slogan and taking into consideration also their size and position within the earlier mark and the fact that consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75), the earlier mark is likely to be pronounced simply as ‘IMD’ when referred to by the relevant public. The figurative element of the earlier mark will not be pronounced.

Taking into account the abovementioned principles and the assessment of the distinctive and dominant elements of the signs, they are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark. The public in the relevant territory will perceive the meaning of the slogan ‘REAL LEARNING. REAL IMPACT’ of the earlier mark (which is, however, non-distinctive) and the possible meaning conveyed by its figurative element. 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 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 goods and 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, despite the presence of a non-distinctive element in the mark, as stated in section c) of this decision.

e) Global assessment, other arguments and conclusion

 

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).

The goods and services are identical. They are directed at the general and professional public, with an average degree of attention. The earlier mark is distinctive to a normal degree.

The signs are visually and aurally similar to an average degree, while they are conceptually not similar. However, the conceptual difference has a very limited impact on the assessment of likelihood of confusion, insofar as it concerns non-distinctive elements (‘REAL LEARNING. REAL IMPACT’) and, eventually, a figurative element which, as explained in section c), has a lower impact on the consumer than the verbal component ‘IMD’ of the earlier mark.

The initial and distinctive verbal element of the earlier mark ‘IMD’ is identically included at the beginning of the contested sign. Moreover, as explained above in section c) of this decision, consumers are likely to refer verbally to the earlier mark only by its initial element ‘IMD’. Therefore, and despite the existence of an additional (second) equally distinctive verbal element in the contested sign, the differences between the signs are not sufficient to counterbalance their similarities. The contested sign lacks elements that could allow consumers to safely differentiate between the signs.

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 and services covered are from the same undertaking or economically linked undertakings. Indeed, It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public will confuse the marks or, alternatively, regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union sufficient to reject the contested application.

 

Therefore, the opposition is well founded on the basis of the opponent’s International trade mark registration designating the European Union No 1 353 876. It follows that the contested trade mark must be rejected for all the contested goods and 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

 

 

Saida CRABBE

Maria Helena GRANADO CARPENTER

Helen Louise MOSBACK

 

 

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.