OPPOSITION No B 1 736 316

The Hebrew University of Jerusalem (Not-for-profit corporation), Givat Ram 34165, 91341, Jerusalem, Israel (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213, Düsseldorf, Germany (professional representative)

a g a i n s t

The African Institute for Mathematical Sciences - Next Einstein Initiative Foundation (UK), 57-58 Russell Square, WC1B 4HS, London, United Kingdom (applicant), represented by Edwin Coe LLP, 2 Stone Buildings, Lincoln's Inn, WC2A, 3TH, London, United Kingdom (professional representative).

On 23/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 736 316 is upheld for all the contested goods and services.

2. European Union trade mark application No 9 147 811 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 147 811 for the figurative mark . The opposition is based on European Union trade mark registration No 7 486 301 and European Union trade mark registration No 6 585 434, both for the word mark ‘EINSTEIN’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registrations No 7 486 301 and No 6 585 434.

In the present case, the contested trade mark was published on 20/07/2010.

Earlier European Union trade mark registration No 7 486 301 was registered on 06/04/2009 and earlier European Union trade mark registration No 6 585 434 was registered on 07/01/2009. Therefore, the request for proof of use is inadmissible.

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 7 486 301.

a) The goods and services

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; computer education and training services; providing on-line publications.

Class 42: Medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; computer consultation and diagnostic services; computer programming and software design for others; creating, implementing and maintaining web sites for others; computer data recovery services; providing databases featuring general and local news, and information of interest to specific geographic areas; providing on-line publications; providing search engines for obtaining data on a global computer network; installation of computer software; computer systems analysis; computer time-sharing services; leasing computer facilities; computer website hosting services; monitoring the computer systems of others and providing back-up computer programs and facilities; registration of domain names for identification of users on a global computer network; licensing of computer software; computer software repair, installation and maintenance services.

The contested goods and services are the following:

Class 9: Downloadable electronic publications and information provided on-line from databases or the Internet relating to mathematics and science.

Class 16: Books, periodical publications, magazines (periodicals), journals (publications), posters, maps, charts, printed matter and photographs all relating to mathematics and science; educational publications; educational materials.

Class 36: Charitable fund raising; arranging charitable collections; information and advice relating to the foregoing.

Class 41: Education services; education information services; education training services; education services provided by institutes of higher education; provision of education on-line from a computer database or via the internet or extranets; education and training services relating to mathematics and science; organisation of conferences relating to education and to vocational training; computer assisted education services; consultancy services regarding training and education; career information and advisory services (educational and training advice); education services relating to vocational training; International student exchange programmes; organization of seminars, working groups, research groups and conventions relating to mathematics and science; publication of education materials; provision of on-line electronic publications (not downloadable) relating to mathematics and science; charitable services, namely education, training, vocational training and academic mentoring, and information services relating thereto.

Class 42: Research and development in the field of mathematics and science.

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

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 goods in Class 9

The contested downloadable electronic publications and information provided on-line from databases or the Internet relating to mathematics and science in Class 9 are similar to the opponent’s providing on-line publications in Class 41 as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 16

The contested books, periodical publications, magazines (periodicals), journals (publications), posters, maps, charts, printed matter and photographs all relating to mathematics and science; educational publications; educational materials are similar to the opponent’s education in Class 41 as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 36

The contested charitable fund raising; arranging charitable collections; information and advice relating to the foregoing are included in the broad category of the opponent’s financial affairs in Class 36. Therefore, they are identical.

Contested services in Class 41

The contested education services; education information services; education training services; education services provided by institutes of higher education; provision of education on-line from a computer database or via the internet or extranets; education and training services relating to mathematics and science; organisation of conferences relating to education and to vocational training; computer assisted education services; consultancy services regarding training and education; career information and advisory services (educational and training advice); education services relating to vocational training; International student exchange programmes; organization of seminars, working groups, research groups and conventions relating to mathematics and science; publication of education materials; provision of on-line electronic publications (not downloadable) relating to mathematics and science; charitable services, namely education, training, vocational training and academic mentoring, and information services relating thereto are identical to the opponent’s education; providing of training; cultural activities; computer education and training services; providing on-line publications, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

Contested services in Class 42

The contested research and development in the field of mathematics and science are included in the broad category of the opponent’s scientific and industrial research. 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 goods and services found to be identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

EINSTEIN
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.

Some of the verbal elements of the contested sign, namely the words ‘AIMS’ and ‘NEXT’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for instance, the Italian- and the Spanish-speaking part of the public.

The earlier mark is a word mark, ‘EINSTEIN’. The contested sign is a figurative mark. It consists of the word element ‘AIMS’ under which lie the elements ‘NEXT EINSTEIN’. These verbal elements are depicted in fanciful black letters. On their left, it lies a figurative elements which consists of a circle made of sort of black rays in the middle of which it is placed a highly stylized depiction of the silhouette of the African continent.

The elements ‘AIMS’ and ‘NEXT’ are meaningless for the part of the public taken into account, so these elements are distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

The figurative element of the contested sign will be associated to the African continent. This element is, therefore, likely to be understood as a reference to a geographical area that can be, for instance, the origin of the good and services, or the subject or some others, such as for instance the goods in Class 16 like educational publication. In this sense, this element is weak for all the goods and services.

As regards the element ‘EINSTEIN’, which is common to both signs, it will be immediately associated, as pointed out by the opponent, to the surname of Albert, 1879–1955, US physicist and mathematician, born in Germany. He formulated the special theory of relativity (1905) and the general theory of relativity (1916), and made major contributions to the quantum theory, for which he was awarded the Nobel prize for physics in 1921. He was noted also for his work for world peace. It cannot be excluded that, at least business customers with specific professional knowledge or expertise, will also associate this word to the concept, named after the aforementioned scientist, of the radiant energy of a given frequency required to effect the complete photochemical transformation of one mole of a photosensitive substance being equal to about 0.004 erg second times the frequency in question.

If the element ‘EINSTEIN’ is clearly distinctive for some of services covered by the trade marks at issue, such as charitable fund raising; arranging charitable collections; information and advice relating to the foregoing in Class 36, the same is not valid for the remaining goods and services in Classes 9, 16, 41 and 42. In fact, it must be kept in mind that Einstein and his theories can be the subject matter, for instance, of goods and services covered by the marks in dispute in Classes 9, 16, 41 and 42 as well it is possible that the use of ‘EINSTEIN’ as the name of a concept in physics alludes, without describing them, to services in Class 42, although it is not an existing category on the market.

It is evident that in this case, the element must be considered, although not directly descriptive, at least weak.

As regards the contested sign, account must be also taken of the fact 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).

Visually, the signs coincide in the element ‘EINSTEIN’, which is the only element of the earlier mark and is weak for part of the goods and services, while it is normally distinctive for others. They differ in the additional distinctive elements ‘AIMS NEXT’ and in the weak figurative element of the contested sign, a part of the graphic arrangement of the contested sign.

Therefore, the signs are visually similar to, at least, a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters of the element ‘EINSTEIN’, present identically in both signs, which form an element that is weak for some of the goods and services and normally distinctive for others.

The pronunciation differs in the sound of the letters ‛AIMS NEXT’ of the contested sign, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to, at least, a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to, at least, a low degree, since the conceptual coincidence regards an element which possesses a limited distinctive character for the majority of the goods and services covered by the trade marks in dispute. For the services for which the element ‘EINSTEIN’ is normally distinctive, 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in due time in order to prove such a claim.

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 low for some of the goods and services in question, namely goods and services in Classes 9, 16, 41 and 42.

The mark has a normal degree of distinctiveness for the remaining services in relation to which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods and services have been found to be partly identical and partly similar to the opponent’s goods and services. They are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

As regards the sign, it is important to note that the earlier mark ‘EINSTEIN’ has been found weak for part of the goods and services, while it is normally distinctive for other services such as charitable fund raising; arranging charitable collections; information and advice relating to the foregoing n Class 36.

A finding that a trade mark has a low or even very low (minimal) degree of distinctiveness may have a different impact on the likelihood of confusion. In general, this finding is an argument against likelihood of confusion. It must however be balanced with the other factors, like the degree of similarity of the signs and the goods or services, as well as the level of attention and sophistication of the relevant public.

The Court has emphasized on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding of 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 among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the contested sign also contains the element ‘EINSTEIN’, so that the signs can be considered, at least, visually, aurally and conceptually similar to a low degree. However, this is accompanied by other elements which are also weak, such as the figurative element, or that are meaningless. The fact that the elements ‘AIMS NEXT’ are meaningless for thepart of the public taken inot account renders more relevant the clear conceptual similarity between the mark.

The Opposition Division deems that although the similarities between the signs derives from a weak element, at least for some of the goods and services, they are not counterbalanced by the presence of additional elements in the contested sign. The element ‘EINSTEIN’ for part of the services is distinctive, namely services in Class 36. For some of the goods and services, such as goods in Classes 9 and 16 and services in Classes 41 and 42, it is allusive but it is not directly descriptive.

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).

Also, 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).

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.

Considering all the above, there is a likelihood of confusion on, for instance, the part of the public who speaks Italian or Spanish, who will only attribute a meaning, among the verbal elements of the signs, to the element ‘EINSTEIN’. 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 7 486 301. It follows that the contested sign must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 7 486 301 leads to the success of the opposition and to the rejection of the contested sign for all the goods and 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(5) 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PEREZ BARBER

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.