OPPOSITION No B 3 125 889

Alertief Management B.V., Hermelijnsingel 105, 4105 VK Culemborg, The Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative)

a g a i n s t

Luca Ottelli, Viale C. Colombo 32, 25127 Brescia, Italy (applicant).

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

DECISION:

1. Opposition No B 3 125 889 is partially upheld, namely for the following contested services:

Class 35: Business assistance, management and administrative services; advertising, marketing and promotional services.

Class 41: Publishing, reporting, and writing of texts.

2. European Union trade mark application No 18 221 715 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 09/07/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 221 715 for the figurative mark . The opposition is based on, inter alia, Benelux trade mark registration No 942 538 for the word mark ‘ALERTIEF’. 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.

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 Benelux trade mark registration No 942 538 for the word mark ‘ALERTIEF’.

a) The services

The services on which the opposition is based are the following:

Class 35: Advertising; business management; business administration; clerical services; marketing; public relations services; business consulting services; business management and organization consultancy; business efficiency expert services; strategic business planning; business network services; interim business management; human resources management; employment agencies; book-keeping; provision of commercial information; compilation of statistics; marketing study, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial and advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 41: Education; training; entertainment services; sporting and cultural activities; coaching [education and training]; providing of training facilities; compilation and providing of training, courses and workshops; arranging and conducting of conferences, seminars, congresses, symposiums, lectures and other such educational activities; publishing, lending and dissemination of newsletters, books, newspapers, magazines, brochures, leaflets, printed matter and other texts and publications; organisation of trade fairs and exhibitions for educational purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; scientific research in the social and social field; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet.

The contested services are the following:

Class 35: Business assistance, management and administrative services; advertising, marketing and promotional services.

Class 36: Valuation services; financial and monetary services, and banking.

Class 41: Publishing, reporting, and writing of texts.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Business management; advertising, marketing are identically contained in both lists of services.

The contested business assistance is either included in the broad category of the opponent’s business management or these services overlap. Therefore, they are identical.

The contested administrative services are either included in the broad category of the opponent’s clerical services or these services overlap. Therefore, they are identical.

The contested promotional services are either included in the broad category of the opponent’s marketing or these services overlap. Therefore, they are identical.

Contested services in Class 36

The contested valuation services; financial and monetary services, and banking consist of services rendered in financial and monetary affairs, valuation services and providing all kinds of services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business (banking services). When comparing these services with the opponent’s services in Classes 35, 41 and 42, these are considered dissimilar. These services have a different nature, purpose and method of use. They are not complementary, nor in competition with each other. Furthermore, they are not originating from the same undertakings, they are offered through different distribution channels and target a different relevant public.

Contested services in Class 41

Publishing is identically contained in both lists of services.

The contested reporting, and writing of texts are either included in the broad category of the opponent’s publishing or these services overlap. Therefore, they are identical.

The applicant argued that the nature of its services is different to that of the opponent’s, since the applicant ‘ALERTO’ is mainly a web and mobile application (App) for certain activities, which cannot be identified for confidentiality reasons, whereas the opponent is an organisational consultancy company that offers coaching, temporary management and training. In that regard, the comparison of goods and services required by Article 8(1)(b) EUTMR must relate to the description of the goods and services covered by the marks and not to the goods and services for which the trade mark is actually used unless, following a valid and admissible request for proof of genuine use of the earlier mark, the proof is furnished only in respect of some of the goods/services. Therefore, in the present case, the comparison of the services must be based on the wording indicated in the lists of services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). For all these reasons, the applicant’s argument must be dismissed.

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, such as those in the publishing and business management fields.

The public’s degree of attention may vary from average for some of the services, since nothing in their nature, manner of purchase or average price requires that consumers are particularly attentive and observant when choosing such services, to above average (e.g. for business management), since they could be purchased by specialists in a particular field for a very specific purpose, because of their specialised nature and conditions, and/or they may have serious consequences for the functioning of a business.

c) The signs

ALERTIEF
Earlier trade mark	Contested sign

The relevant territory are the Benelux countries.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The elements ‘ALERTIEF’ and ‘ALERTO’ might be perceived as having the meaning explained below in certain territories, for example in those countries where Dutch is understood. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

The earlier mark is the word mark ‘ALERTIEF’. The contested sign is a figurative mark composed of the verbal element ‘ALERTO’, depicted in fairly standard red upper-case letters. The sign also contains also some red lines, one ending with an arrow. All these elements are placed on a grey background.

The word ‘ALERTO’, despite being perceived as a word having a Latin origin, it will be perceived as referring to the Dutch word ‘ALERT’, since it only has one more letter ‘O’ at the end. The same can be said for the earlier mark, although the word ‘ALERTIEF’ as such does not exist in Dutch, it might be perceived as being the adjective of the root referring to the word ‘ALERT’, as many adjectives finish with the letters ‘*IEF’ in Dutch. This word ‘alert’ would be understood as meaning vigilantly attentive, brisk, nimbre, or lively (information extracted from van Dale Dutch Dictionary on 21/07/2021). Therefore, neither the meaningless words ‘ALERTO’ and ‘ALERTIEF’, nor the element ‘ALERT’ has any meaning directly related to the relevant services and they are, therefore, distinctive.

The Opposition Division, in this regard, disagrees with the applicant, in its observations, in which it points out that ‘…the “alert” element is a term that is commonly used in many and different sectors and this makes it banal and devoid of any distinctive character. (Case T-558/13)…the verbal element ‘alertief’ in Dutch means “alert” and is therefore an allusive and generic element which describes the characteristics of the services provided. It follows that the “alertief” sign has a low distinctive character’. First of all, the applicant refers to case T-558/13 (04/03/2015, T-588/13, FORCE-X/FSA K-FORCE), but in this decision no reference at all is made to the word ‘ALERT’ at all. Secondly, even though it might have the meaning of ‘alert’, this term would refer to some characteristics in the field of security and the like (receiving an alert on your phone when the alarm in your house starts), but certainly not to the relevant services in the present case. Therefore, the applicant’s argument has to be set aside.

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; 19/12/2011, R 233/2011-4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2010-5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59). This also applies to the red lines, one with an arrow, and the grey background, at least the latter serving a more decorative purpose in the contested sign.

The figurative element in the contested sign in the form of a grey background merely serves a more decorative purpose and the red lines, one with an arrow, have also a limited impact on the comparison, in particular because the verbal component has a stronger impact than a figurative element (see previously mentioned paragraph).

Furthermore, the Opposition Division considers that the contested sign has no element that could be considered clearly more dominant than other elements. The sign does not contain any components that due to their position, size, dimensions and/or use of colours would be visually outstanding in respect to others.

Visually, the earlier mark’s only element coincides in the letters ‘ALERT*’, which are placed at the beginning of both signs. The signs differ in the last letters ‘*IEF’ of the earlier mark, the last letter ‘O’ of the contested sign’s verbal element, and the figurative elements of the contested sign, having a more limited impact on the comparison. The red colour and fairly standard typeface will not lead the consumer’s attention away from the word they embellish.

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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that the letters ‘ALERT*’ coincide at their beginning is relevant for the comparison.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ALERT*’, present identically in both signs. The pronunciation differs in the additional letters ‘IEF’ of the earlier mark and the letter ‘O’ of the contested sign.

Therefore the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The letters ‘ALERT*’ in the earlier mark and in the contested sign convey the same meaning. As the signs will be associated with a similar meaning as referring to the Dutch word ‘alert’, the signs are conceptually similar to an average degree.

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

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The services are partly identical and partly dissimilar and they target the public at large and a more professional public, whose degree of attention varies from average to above average.

The signs are visually similar to a below average degree and aurally and conceptually similar to an average degree.

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 or above average 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).

Taking into account all the circumstances, the Opposition Division finds that the differences between the signs, being an additional letter in the verbal element of the contested sign and some figurative elements, with a more limited impact on the comparison, and in the letters ‘IEF*’ of the earlier mark, are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the services that are identical and will perceive them as having the same origin, even for that part of the public paying an above-average degree of attention.

Taking into account all relevant factors, it is considered that the relevant public might be led to believe that the relevant services come from the same undertaking or economically linked undertakings. The identity of some of the services (in Classes 35 and 41) will counterbalance the below average degree of visual similarity between the marks, this according to the interdependence principle mentioned above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 942 538 for the word mark ‘ALERTIEF’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux countries 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 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

 Benelux trade mark registration No 942 614 for the figurative mark in Classes 35, 41 and 42.

Since this mark covers the same scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Helen Louise MOSBACK

Chantal VAN RIEL

Michal KRUK

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.