OPPOSITION Nо B 3 122 756

Gruppo Orienta S.r.l., Via Luigi Schiavonetti, 290, 00173 Rome, Italy (opponent), represented by Akran Intellectual Property S.r.l., Via del Tritone, 169, 00187 Rome, Italy (professional representative)

a g a i n s t

Jose Andres Bethencourt Rodriguez, c/ Constitución, 23, portal 4, piso 3, 3A, 38710 San Pedro, Breña Alta, Spain (applicant), represented by GT. de Propiedad Industrial, S.L., c/ Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative).

On 07/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 756 is upheld for all the contested services.

2. European Union trade mark application No 18 204 121 is rejected in its entirety.

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

REASONS

On 29/05/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 204 121 (figurative mark). The opposition is based on European Union trade mark registration No 18 098 170 ‘LEAD YOUR FUTURE’ (word 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, inter alia, the following:

Class 41: Organisation of conferences, seminars, symposiums, workshops, conferences, congresses relating to the market sector for the demand and supply of work and the training and professional training sector.

The contested services are the following:

Class 41: Provision of training and education.

The contested provision of training and education includes, as a broader category, or at least overlaps with, the opponent’s organisation of conferences, seminars, symposiums, workshops, conferences, congresses relating to the market sector for the demand and supply of work and the training and professional training sector. Since the Opposition Division cannot dissect ex officio the broad category 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 services found to be identical are, as correctly indicated by the opponent, directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

LEAD YOUR FUTURE
Earlier trade mark	Contested sign

The relevant territory is 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.

The verbal elements of both signs are meaningful for the English-speaking consumers in the relevant territory. Furthermore, this part of the public includes the Anglophone countries (i.e. Ireland and Malta), as well as other countries where a significant part of the public has sufficient knowledge of English as a foreign language. For example, the Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23). Consequently, and considering that this factor has an impact on the conceptual comparison between the signs, the Opposition Division finds it appropriate to focus on this part of the public.

The earlier mark is an imperative expression ‘LEAD YOUR FUTURE’, depicted in upper-case letters. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is depicted in upper- or lower-case letters.

The contested sign is a figurative mark containing the expression ‘I Lead Future’, which is in the first person singular of the present simple tense. This is depicted in fairly standard title-case letters. The first letter ‘I’ is depicted in white and placed inside a blue oval. The verbal elements ‘Lead Future’, depicted in black and blue, respectively, are underlined by a multicoloured line. However, the stylisation in the contested sign’s is not of such a nature as to make the expression illegible or to draw attention away from it (22/04/2009, R 252/2008‑1, THOMSON / THOMSON (fig. mark), § 35). Consequently, the stylisation of the expression is, as pointed out by the opponent, of a purely decorative nature.

The role of the figurative element of the contested sign (the blue oval), which is a simple common geometric shape, is to accentuate the first letter of the expression ‘I Lead Future’. This oval and the multicoloured line underlining the part of the expression ‘Lead Future’ are non-distinctive elements of a purely decorative nature. It should be also noted that, 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, the figurative element and the multicoloured line both have a significantly lower impact on the overall impression of the contested sign than its verbal expression.

The expressions ‘LEAD YOUR FUTURE’ of the earlier mark and ‘I Lead Future’ of the contested sign (although they display a different conjugation and grammatical form of the verb ‘to lead’) will be perceived by the public under analysis as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement for customers that one can make a choice about their future or can influence their future by, for example, investing in education and training. Consequently, the expression ‘LEAD YOUR FUTURE’ of the earlier mark and, likewise, ‘I Lead Future’ of the contested sign are distinctive to a below-average degree in relation to the relevant services.

The elements ‘YOUR’ of the earlier mark and ‘I’ of the contested sign are pronouns that only serve to determine who can ‘lead their future’, either a second person(s) (different from the speaker) or the speaker themselves. Therefore, when perceived as such, their impact on the comparison is limited.

Neither sign has a dominant element. The earlier mark is a word mark. Word marks have no dominant elements because, by definition, they are written in standard typeface. The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the words ‘LEAD’ and ‘FUTURE’. However, they differ in the earlier mark’s word ‘YOUR’ placed between the verbal elements ‘LEAD’ and ‘FUTURE’, and in the contested sign’s first letter, ‘I’, placed inside the blue oval and this sign’s purely decorative figurative aspects.

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

Aurally, the pronunciation of the signs coincides in the sounds of the words ‘LEAD’ and ‘FUTURE’, present identically in both signs, as the figurative aspects of the contested sign have no impact on the way the words are pronounced.

The pronunciation differs in the sound of the word ‘YOUR’ of the earlier mark and the letter ‘I’ of the contested sign. These have no counterpart in the respective other sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public under analysis will associate the signs with a similar meaning, namely making a choice/decision about one’s future. The differences result from the conjugation and grammatical form of the signs’ verbal elements, where the earlier mark is an imperative expression and the contested sign is in the first-person singular of the present simple tense. However, this does not make a significant difference in the semantic content conveyed by the signs, since they refer to the same general idea.

Therefore, notwithstanding the limited distinctiveness of the signs’ concept, the signs are conceptually highly 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below-average for the services in question from the perspective of the public under analysis.

e) Global assessment, other arguments and conclusion

The contested services are identical to the opponent’s services, and they target the general public as well as business customers with specific professional knowledge or expertise, whose degree of attentiveness may vary from average to high.

From the perspective of the English-speaking part of the public in the relevant territory, which is the public under analysis for the present assessment, the earlier mark has a below-average degree of inherent distinctiveness in relation to the services at issue. However, the finding of a below-average degree of distinctiveness for the earlier trade mark does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark of a below-average degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The signs have been found to be visually similar to an above-average degree and aurally and conceptually highly similar.

On account of the coinciding verbal elements, ‘LEAD’ and ‘FUTURE’, which are immediately identifiable in both signs, and given the reduced impact of the differentiating elements in the signs, as explained in section c) of this decision, the Opposition Division considers that the addition of these elements as well as the figurative aspects of a purely decorative nature in the contested sign is insufficient to safely distinguish the signs in the context of the services found to be identical. In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

This finding is not called into question by the fact that the relevant public’s degree of attention may be relatively high and the earlier mark has a below-average degree of inherent distinctiveness in relation to the services at issue. Bearing in mind the principle that the evaluation of likelihood of confusion implies some interdependence between the relevant factors, the sufficiently strong similarity between the signs on the aural and conceptual levels, viewed in conjunction with the fact that the services at issue are identical, counteracts the potentially heightened degree of the public’s attentiveness and the earlier mark’s below-average degree of inherent distinctiveness in relation to the services at issue.

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 or economically linked undertakings. It is likely that the public under analysis will perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the English-speaking part of the relevant public for whom there is a clear conceptual link between the signs. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 098 170. It follows that the contested sign 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

Martin MITURA

Agnieszka PRZYGODA

Catherine MEDINA

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.