OPPOSITION Nо B 3 124 217

Samu Servicios de Asistencia Médica de Urgencia, S.A., Avda. Américo Vespucio S/N, Edif. Cartuja, Bl. E, Locales 7 - 8 - 9., 41092 Sevilla, Spain (opponent), represented by Iñigo A. González-Mogena González, Bravo Murillo nº 373, 3º A, 28020 Madrid, Spain (professional representative)

a g a i n s t

Samu Transforms GmbH, Rathausplatz 15, 82362 Weilheim, Germany (applicant)

On 07/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 217 is upheld for all the contested services, namely:

Class 35: Business consultancy and advisory services; business consulting; business management consultancy and advisory services; business consultancy to firms; business management consultancy via the internet; business management and consultancy services; business strategy and planning services; business strategy services; business organization consultancy; advisory services relating to the corporate structure of businesses.

Class 41: Organisation of seminars; seminars; organisation of seminars relating to education; conducting of instructional seminars; organisation of webinars; arranging and conducting of seminars; organisation of seminars and conferences; planning of seminars for educational purposes; arrangement of seminars for educational purposes; conducting of seminars and congresses; arranging of workshops and seminars; conducting courses, seminars and workshops; providing online training seminars; arranging and conducting of seminars and workshops; organisation of seminars relating to training; arranging and conducting conferences and seminars.

2. European Union trade mark application No 18 213 517 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 17/06/2020, the opponent filed an opposition against some of the services of European Union trade mark application No 18 213 517 (figurative mark), namely against all the services in Classes 35 and 41. The opposition is based on, inter alia, European Union trade mark registration No 9 799 974 (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 799 974.

a) The services

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

Class 35: Business management consultancy; business management.

Class 41: Education.

The contested services are the following:

Class 35: Business consultancy and advisory services; business consulting; business management consultancy and advisory services; business consultancy to firms; business management consultancy via the internet; business management and consultancy services; business strategy and planning services; business strategy services; business organization consultancy; advisory services relating to the corporate structure of businesses.

Class 41: Organisation of seminars; seminars; organisation of seminars relating to education; conducting of instructional seminars; organisation of webinars; arranging and conducting of seminars; organisation of seminars and conferences; planning of seminars for educational purposes; arrangement of seminars for educational purposes; conducting of seminars and congresses; arranging of workshops and seminars; conducting courses, seminars and workshops; providing online training seminars; arranging and conducting of seminars and workshops; organisation of seminars relating to training; arranging and conducting conferences and seminars.

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 business consultancy and advisory services; business consulting; business management consultancy and advisory services; business consultancy to firms; business management consultancy via the internet; business management and consultancy services; business strategy and planning services; business strategy services; business organization consultancy; advisory services relating to the corporate structure of businesses are identically contained in the opponent’s list, or are included in or overlap with the opponent’s broad categories of business management and business management consultancy. Therefore, they are identical.

Contested services in Class 41

The contested organisation of seminars; seminars; organisation of seminars relating to education; conducting of instructional seminars; organisation of webinars; arranging and conducting of seminars; organisation of seminars and conferences; planning of seminars for educational purposes; arrangement of seminars for educational purposes; conducting of seminars and congresses; arranging of workshops and seminars; conducting courses, seminars and workshops; providing online training seminars; arranging and conducting of seminars and workshops; organisation of seminars relating to training; arranging and conducting conferences and seminars are all included in the broad category of the opponent’s education. Therefore, they are identical.

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 directed at the public at large and at business customers with specific professional knowledge or expertise in the fields of business and education.

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 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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for the reasons outlined below.

The common verbal element ‘SAMU’ is not meaningful. Consequently, it is not distinctive for the relevant public. The additional verbal elements in both signs, namely ‘International Network’ in the earlier mark and ‘transforms’ in the contested sign are English words. ‘International network’ will be perceived as referring to the fact that the relevant services are offered worldwide and, therefore, the distinctiveness of this expression is significantly reduced. The verbal element ‘transforms’ might be perceived by the relevant public as referring to the fact that purchasing the relevant services can make a difference to the person or can improve the business or the sales figures of a company. Therefore, the distinctiveness of ‘transforms’ is slightly reduced.

The figurative element in the earlier mark represents a globe in different shades of blue with a serpent wrapped around a staff inside it. The serpent, in turn, is depicted on what resembles a star. The relevant public might perceive this image as the symbol commonly used for medical services and thus it might allude to the fact that the services are related to the medical field. 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 does. 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).

Part of the relevant public will perceive the figurative element in the contested sign as the letter ‘S’ while the remaining part will perceive it as a fanciful device. Although distinctive, it also has less weight in the comparison, as seen above.

The stylisation of the verbal elements in both signs will be perceived merely as a graphical means of bringing the verbal elements to the public’s attention public and, therefore, its impact on the comparison of the signs is limited.

The earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

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/top of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in their verbal element ‘SAMU’ and they differ in the additional verbal elements in both signs. They further visually differ in their figurative elements and aspects.

Taking into account the distinctiveness and the weight of the different elements of the signs, they are visually similar to a below average degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As some of the verbal elements in the signs will be associated with dissimilar meanings the signs are conceptually not similar. However, since the differing concepts result from elements with reduced distinctiveness, the impact of the conceptual perception is limited.

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 relevant public’s perspective. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of some elements of reduced distinctiveness in the mark, as stated above 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 identical services target the public at large as well as professionals. The degree of attention varies from average to higher than average.

The signs are visually similar to a below average degree and are aurally similar to an average degree. As the differing concepts in the signs emanate from elements with reduced distinctiveness, the conceptual perception is of little weight. The distinctiveness of the earlier mark is normal.

The Court has previously held, that where the goods are identical or highly similar a likelihood of confusion can only be excluded where the signs present substantial visual, aural or conceptual differences (29/01/2013, T‑283/11, Nfon, EU:T:2013:41, § 69; 28/04/2014, T‑473/11, Menochron, EU:T:2014:229, § 46). In the present case, the differences between the signs are confined to elements of reduced distinctiveness and weight in the overall impression of 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/services covered are from the same undertaking 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 (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In this case, for all of the above, it is considered that the coincidences between the signs, together with the identity of the services involved, are enough to outweigh their dissimilarities, and may induce the relevant public to believe that the conflicting services come from the same undertaking or economically-linked undertakings. This is the case not only for the public at large but also for professionals, including where the public’s degree of attention is higher than average.

Considering all the above, there is a likelihood of confusion, including association, 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 is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 799 974. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right No 9 799 974 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Sylvie ALBRECHT

Christophe DU JARDIN

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.