OPPOSITION No B 3 129 929

Fundació per a La Universitat Oberta De Catalunya, Av. Tibidabo, 39-43,
08035 Barcelona, Spain (opponent), represented by Sugrañes, S.L.P.,
Calle de Provenza, 304, E-08008 Barcelona, Spain (professional representative) 

a g a i n s t

Francesco Idone, Viale Della Costituzione 27, I-38122 Trento, Italy (applicant).

On 11/08/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 129 929 is upheld for all the contested goods and services, namely for the following goods and services:

Class 16: Teaching materials [except apparatus]. Class 41: Practical training [demonstration]; Arranging and conducting of seminars; Arrangement of conferences for educational purposes; Arranging and conducting of conferences; Organisation of seminars and conferences; Organisation of meetings and conferences; Instruction in cosmetic beauty; Providing of training, teaching and tuition; Organising of educational lectures.

2.	European Union trade mark application No 18 249 305 is rejected for all the contested goods and services as reflected under 1. of this dictum. It may proceed for the remaining services.

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

REASONS

 

On 01/09/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 249 305 MOSAIC FACE (word mark),
namely against all the goods and services in Classes 16 and 41. The opposition is based
on European Union trade mark registration No 11 238 532, (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 the following:

Class 09: Scientific, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; Apparatus for recording, transmission and reproduction of sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-operated apparatus; Data processing equipment and computers; CDs, DVDs; Electronic publications (electronically-downloadable); none of the aforesaid goods relating to crisis management, crisis relief or disaster relief; none of the aforesaid goods being  software for oncology treatment planning, or the creation management of medical records or relating to oncology treatment planning,  or the creation or management of medical records.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding articles; Photographs; Stationary; Adhesives for stationery or household use; Artists' materials; Paint brushes; Office requisites (except furniture), instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Publications, magazines, periodicals, books, forms and pamphlets; none
of the aforesaid goods relating to crisis management, crisis relief or disaster relief; none of the aforesaid goods relating to oncology treatment planning,
or the creation or managements of medical records or relating to software for oncology treatment planning, or the creation or management of medical records.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Providing on-line electronic publications, not downloadable; Publication of texts [other than publicity texts]; Publication of books; Publication of electronic books and journals on-line; Arranging and conducting of seminars; none of the aforesaid goods relating to crisis management, crisis relief or disaster relief; none of the aforesaid services relating to oncology treatment planning, or the creation or management of medical records
or relating to software for oncology treatment planning, or the creation
or management of medical records.

The contested goods and services are the following:

Class 16: Teaching materials [except apparatus].

Class 41: Practical training [demonstration]; Arranging and conducting of seminars; Arrangement of conferences for educational purposes; Arranging and conducting of conferences; Organisation of seminars and conferences; Organisation of meetings and conferences; Instruction in cosmetic beauty; Providing of training, teaching and tuition; Organising of educational lectures.

All of the goods and services covered by the earlier mark are subject to a limitation regarding their scope and type, namely subject to the following limitation:

none of the aforesaid goods relating to crisis management, crisis relief or disaster relief; none of the aforesaid goods being  software for oncology treatment planning, or the creation management of medical records or relating to oncology treatment planning,  or the creation or management of medical records.

To secure better clarity of the comparison of goods and services any reference to the opponent’s goods with a description ‘with limitation’ or ‘as limited’ covers the entire limitation indicated above.

Contested goods in class 16

The contested goods teaching materials [except apparatus] include, as a broader category,
the earlier teaching material (except apparatus), as limited. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in class 41

The contested providing of training, teaching and tuition, practical training [demonstration], arranging and conducting of seminars ,arranging and conducting of conferences, arrangement of conferences for educational purpose, organisation of educational lectures as well as organisation of seminars and conferences, organisation of meetings and conferences include or at least overlap, as broader categories, with the earlier education, providing of training and arranging and conducting of seminars, as limited. Regarding the above and given that the Opposition Division cannot dissect ex officio the broad category of the contested services; they are considered identical to the opponent’s services.

The contested instruction in cosmetic beauty services are contained in the opponent’s broader categories of education and providing training, as limited. The limitation of the opponent’s services does not relate to ‘cosmetic beauty services’, therefore the discussed contested services are 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, their specialised nature, the frequency of purchase and their price.

In the present case, the goods and services found to be identical are directed at both the public at large and at business customers with specific professional knowledge or expertise. For example, the training services might be directed at public at large whereas the teaching materials, arranging and conducting of seminars and conferences, organisation of meetings and conferences, providing of training, teaching and tuition, etc., at business customers and professionals.

Regarding the specialized nature and purpose of the goods and services (connected with broadening of knowledge and education), usually infrequent purchase and specific terms connected with it, their higher price, the degree of attention in the present case may vary from at least average to high regardless of the part of the relevant public.

c) The signs

 

	MOSAIC FACE
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. As all verbal element of the earlier mark, namely the word ‘mosaic’ and the term ‘tecnologias y comunicación multimedia’, are understood by at least part of the relevant public, as explained below, in order to avoid an unnecessary multiplicity of scenarios, the Opposition Division considers it appropriate to focus its attention on the English-, Spanish-, French-, Italian-, and Portuguese-speaking parts of the relevant public given that for these publics, the said words are meaningful and non-distinctive, as this is the best scenario for the opponent in which the present case can be assessed.

The earlier mark is a figurative mark comprising the word ‘mosaic’ and the additional verbal elements ‘tecnologias y comunicación multimedia’ (all placed in one line beneath the word ‘mosaic’ and written in a significantly smaller type font). All components of the earlier sign are inscribed into a rectangular light grey background.

The verbal element ‘mosaic’ will be understood by the English-speaking public as
‘a design which consists of small pieces of coloured glass, pottery, or stone set in concrete or plaster’ (information extracted from Collins Dictionary on 05/08/2021 at https://www.collinsdictionary.com/dictionary/english/mosaic). It will also be understood by the rest of the public under analysis as it has close equivalents in the languages in the relevant territory: Italian (mosaico), French (mosaïque), Portuguese and Spanish (mosaico). It has no direct or indirect meaning in relation to the goods and services concerned and, therefore, it is distinctive. Due to its central position and much bigger size, it clearly dominates the overall impression produced by the earlier mark and thus constitutes its dominant element
(i.e. in the sense of being visually outstanding).

The additional verbal elements of the earlier mark, namely ‘tecnologias y comunicación multimedia’, will be understood by the relevant consumers in Spain. These words are meaningful also for the remaining public under analysis: in France, Portugal, Italy and even by the English-speaking public these verbal elements will be also understood. They have their close equivalents in French (‘Technologies et communication multimédia’), Italian ('Tecnologie e comunicazione multimediale'), Portuguese (‘Tecnologias e comunicação multimídia’) and English (‘Technologies and multimedia communication’). These additional verbal elements have a direct meaning in relation to the goods and services under analysis, for example they may indicate the type or means used for rendering the services concerned or providing teaching materials, etc., and thus are descriptive/non-distinctive. Regarding their significantly smaller size and position beneath the dominant and distinctive verbal element ‘mosaic’, they are likely to be disregarded by the relevant public. Therefore, they will
not change the impression produced by the earlier mark as such.

Following the above, account is taken of the fact that it is likely that, during an interview between the consumer and a seller of the goods or services concerned or
a recommendation of one of those goods/services by another consumer, the earlier sign will not be pronounced as a whole, but will be pronounced solely on the part concerning its dominant element 03/07/2013, T-206/12, LIBERTE American blend, EU:2013:342, § 43-44).

The rectangular background in the earlier sign, will be perceived (if noticed at all) as
a standard/decorative element used in logos. Therefore, it is not distinctive.

Furthermore, 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). In the present case, the consumer will certainly refer to the signs by their verbal components, rather than by describing their stylisation or figurative aspects.

The contested sign is a word mark composed of the identical verbal elements ‘MOSAIC’ followed by the word ‘FACE’.

The word ‘MOSAIC’, for the same reasons as above, is normally distinctive of the relevant goods and services for the public under analysis.

The word ‘FACE’ will be understood by at least the English speaking public in the relevant territory as either ‘front part of your head from your chin to the top of your forehead, where your mouth, eyes, nose, and other features are’ or ‘face of a cliff, mountain, or building
is a vertical surface or side of it’ or, depending on a context, as a ‘side’/’surface’ of objects, situations, etc. (information extracted from Collins Dictionary on 05/08/2021
at https://www.collinsdictionary.com/dictionary/english/face). In any event, it has no direct meaning in relation to the relevant goods and services for the relevant public under analysis and, therefore, its distinctiveness is normal.

Considering the above findings it should be noted that the term ‘MOSAIC FACE’, as such, might be understand by the English-speaking public as a ‘face-shaped mosaic’ or
‘a combination/mixture’ of various different elements/themes or subjects representing
a ‘mosaic’ thereof; nevertheless it does not convey any specific or clear unitary meaning for both the said public at large and the professionals.

Account is taken of the fact 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

It is also true that in word signs or in signs containing a verbal element, the first part
is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Finally, it should be also borne in mind that, in word marks, such as the contested sign, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’). In the case at hand, there is no irregular capitalization in the word ‘MOSAIC’ and thus use of the lower or upper case letters is irrelevant its perception in both signs.

Visually, the signs coincide in the distinctive verbal element ‘MOSAIC’ at the beginning thereof which also constitutes the dominant element of the earlier sign and holds
an autonomous position in the contested mark. However, they differ in the rectangular light grey background, the additional verbal elements in the earlier sign as well as in the word ‘FACE’ in the contested sign.

For the reasons explained above, the coinciding verbal element ‘MOSAIC’ will catch the attention of the consumers first, whereas the other word elements and features in the earlier sign are likely to be overlooked by the relevant public or which, in any event, have less impact on the visual perception of the earlier mark. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory for the public under analysis, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‛MOSAIC’, present identically at the beginning in both signs. The signs differ in the sound of the additional four verbal elements (including the letter ‘Y’ after the word ‘tecnologias’) of the earlier mark and the word ‘FACE’ in the contested sign. However, as explained above, it is likely that the public will not pronounce the additional verbal elements of the earlier sign and focus only on its distinctive element. Considering the above, it is concluded that the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public under analysis, which understands the meaning of the word ‘MOSAIC’ or associates it with one of its close equivalents, both signs refer to the same concept and this is so despite the fact that the additional words of the earlier mark are meaningful given that they are non-distinctive and so cannot convey trade mark significance. Despite the additional distinctive verbal element ‘FACE’ in the contested mark, which is meaningful for the English-speaking part of the relevant public, the concept deriving from the coinciding distinctive verbal element ‘MOSAIC’ at the beginning of the signs will remain strong given that the contested sign lacks any unitary meaning. Therefore, the marks are conceptually similar at least to an average degree.

Since 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.

In its submissions accompanying the Notice of Opposition, the opponent arguably claimed reputation of the earlier mark (and thus an implied claim of enhanced distinctive character), but it did not file any evidence in support of such claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the word ‘mosaic’ (being the dominant and distinctive element of the earlier mark) has no meaning in relation to the goods and services in question from the perspective of the relevant public under analysis in the relevant territory. Therefore, despite the presence of some additional non-distinctive elements in the earlier mark, as stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole is considered to be normal.

e) Global assessment, other arguments and conclusion

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 or economically linked undertakings (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29).

In the present case the compared goods and services are identical. They target both the public at large and business customers/professionals with specific professional knowledge
or expertise. The degree of attention of the relevant public may vary from at least average to high.

The distinctiveness of the earlier mark as a whole is normal.

For the public under analysis, the conflicting signs were found to be visually similar to
an average degree and aurally and conceptually similar to at least an average degree.

The differences between the signs are confined to the presence of an additional expression, being non-distinctive or at least having less impact on the perception of the earlier mark, and the second verbal element ‘FACE’ in the contested mark, yet they cannot offset the overall visual, aural and conceptual similarity between the marks at issue deriving from identical beginnings and the coincidence in the distinctive element ‘MOSAIC’.

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 with an above average degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Given that the earlier mark’s distinctive and dominant verbal element ‘MOSAIC’
is reproduced at the beginning of the contested mark and given the identity between the goods and services, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). For example, the consumers may see the contested mark, comprising the additional verbal element ‘FACE’, as a sub-brand launching a new line of products and/or services that for example comprise a combination of mixed interdisciplinary subjects and themes.

Considering all the above, there is a likelihood of confusion as to origin of the contested goods and services on the part of the English-, Spanish-, French-. Italian-, and Portuguese parts of the relevant public as defined under sections b) and c) above. 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 European Union trade mark registration No 11 238 532, and the contested 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 during 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

 

 

Kieran HENEGHAN

Anna PASIUT

Gonzalo BILBAO TEJADA

 

 

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.