OPPOSITION No B 3 114 526

Vass Consultoria de Sistemas S.L., Av. Europa 1 Edificio B, 28108, Alcobendas, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. de Europa 14, 28108, Alcobendas (Madrid), Spain (professional representative)

a g a i n s t

Vass Productions AB, Grev Turegatan 10, 11446, Stockholm, Sweden (applicant), represented by Fondia Legal Services AB, Kungsportsavenyen 18, 41136, Göteborg, Sweden (professional representative).

On 26/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 526 is partially upheld, namely for the following contested services:

Class 35: Public relations; public relations consultancy; public relations agency; public relations services; advisory services relating to public relations; consultancy regarding public relations communication strategies; assistance to management in commercial enterprises in respect of public relations

Class 41: Organisation of entertainment events.

2. European Union trade mark application No 18 200 621 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 20/03/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 200 621 ‘VASS’ (word mark). The opposition is based on European trade mark registration No 18 117 355 (figurative mark). The opponent invoked Article 8(1)(a) and (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 9: Computer software and programs for computers and other electronic devices; computer software and programs downloadable from computer networks; computer software on data carriers; computer graphics software; computer software for webpages and integration of dynamic webpages; entertainment software; financial software and business management software; e-commerce software.

Class 35: Providing information about products and services via telecommunication networks for advertising and sales purposes; marketing services; advertising; direct marketing; marketing consultancy; online marketing campaigns; online brokerage; professional business consulting; business management consultancy, buniess consulting services; business management focused on the representation of national and foreign companies producing equipment, programs, supplies and consultancy on the business management computer and telecommunication network, business management focused on the distribution and maintenance of equipment, implementation, creation, import and export of goods in general, business administration in the creation, construction, implementation and maintenance of computer programs, business management and business administration focused on computer management consulting, technology and design evaluation, software development and implementation, and business administration focused on advising clients on the adaptation or migration of open computer system environments except business or business administration of all kinds relating to insurance, financial affairs, monetary of real estate affairs.

Class 42: Computer programming; computer programming for the internet; engineering services relating to computers; computer consulting; integration of computer systems and networks; computer network services; computer feasibility studies; advisory services relating to computer programming; graphic design; design of graphics for corporate identity; designing by computer graphics; scientific and technological consultancy services; design and development of computer hardware and software; design of web pages; building and maintaining websites; development of computer software application solutions; design and development of software in the field of mobile applications; updating and adapting of computer programs according to user requirements; hosting the web sites of others on a computer server for a global computer network; hosting of multimedia applications; providing search engines for obtaining data via communications networks; Search engine design services.

The contested goods and services are the following:

Class 35: Public relations; public relations consultancy; public relations agency; public relations services; advisory services relating to public relations; consultancy regarding public relations communication strategies; assistance to management in commercial enterprises in respect of public relations.

Class 41: Training in public relations; special event planning; special event planning consultation; organisation of entertainment events; training courses in strategic planning relating to advertising, promotion, marketing and business.

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 35

The contested public relations; public relations consultancy; public relations agency; public relations services; advisory services relating to public relations; consultancy regarding public relations communication strategies are included in the broad category of, or overlap with, the opponent’s advertising. Indeed, advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Therefore, the above mentioned contested services in Class 35 are identical to the opponent’s advertising services.

The contested assistance to management in commercial enterprises in respect of public relations is a consultancy service that provide assistance in the management all methods and techniques used by enterprises to inform the public of their achievements, promote their brand image and evoke sympathy towards them and promote good indoor relations. Therefore, the contested assistance to management in commercial enterprises in respect of public relations is included in the broad category of the opponent’s advertising. Therefore, they are identical or at least highly similar.

Contested services in Class 41

The contested organisation of entertainment events is lowly similar to the opponent’s entertainment software in Class 9. The complementarity is based on the market reality of enterprises like E-sports. They are organisers of such events where the game software is needed for the provision of them. They target the same public.

The contested training in public relations; special event planning; special event planning consultation; training courses in strategic planning relating to advertising, promotion, marketing and business consist of services of training and of organisation of events. These services have nothing in common with the opponent’s goods and services, which all are related to computer software in Class 9; related to help in the working or management of a commercial undertaking, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services in Class 35; and related to design and development of computer hardware and software in Class 42. They are neither complementary nor in competition. The fact that same education services in Class 41 are in the field of advertising, promotion, marketing, is not enough to find similarity as these services. They do not target the same consumers and are not likely to be delivered by the same kind of undertakings. Therefore, the contested services are dissimilar to all of the opponent’s goods and services in all classes.

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 in varying degrees are directed 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	VASS
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

While it is true that the stylisation of the earlier mark may lead to different readings, as also pointed out by the applicant, it remains that at least part of the public will perceive the word element of the earlier mark as ‘VASS’ in which the letters ‘V’ and ‘A’ overlap. Since there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the present comparison on the part of the public who will read and perceive the verbal element of the earlier mark as ‘VASS’.

The term ‘VASS’, which is the sole word in both signs, has no meaning for the public under analysis. Therefore, it has a normal degree of distinctiveness.

The earlier mark is depicted in a fanciful, stylised form. This stylisation merely plays a decorative role in the signs and will, therefore, hardly catch the consumers’ attention. This includes the depiction of the overlapping letters ‘V’ and ‘A’ with the small wave above the final letter ‘S’ of the sign. In any event, 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.

Contrary to the applicant’s arguments, the earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘VASS’. However, they differ in the stylisation of the letters in the earlier mark, including the small wave, which is merely decorative and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public. Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, neither of the signs has a meaning for the public under analysis. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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 contested services are partly identical or similar in varying degrees and partly dissimilar. The services found to be identical target business customers with specific professional knowledge or expertise, whose degree of attention vary from average to high.

The signs are visually highly similar and aurally identical, on account of their coinciding element, ‘VASS’, which is the sole word of both signs. The conceptual aspect does not influence the assessment of the similarity of the signs. The differences are confined to stylisation of the earlier mark which, as seen above, is merely decorative and has less impact on the consumer than the verbal element ‘VASS’, as explained above. Consequently, these differences are not sufficient to counteract the similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar in varying degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining contested goods because the signs and the goods are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Angela DI BLASIO

Martina GALLE

Félix ORTUÑO LÓPEZ

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.