OPPOSITION No B 1 868 069

Groupe Europeen de Formation, Société Anonyme à Conseil d’Administration, 37, Boulevard Murat, 75016 Paris, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

ebs European Business School gGmbH, Rheingaustr. 1, 65375 Oestrich-Winkel, Germany (applicant), represented by De Faria & Partner, Gustav-Freytag-Str. 19, 65189 Wiesbaden, Germany (professional representative).

On 16/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 868 069 is partially upheld, namely for the following contested goods and services:

Class 16: Instructional and teaching material (except apparatus).

Class 41: Providing of training; educational services; correspondence courses; further education; language teaching services; sporting and cultural activities; management of an institute of higher education (education and training); arranging and conducting of congresses, conferences and lectures; vocational guidance; training consultancy and further training consultancy and education consultancy.

2. European Union trade mark application No 9 741 414 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 741 414. The opposition is based on French trade mark registration No 53 339 120. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely the French trade mark registration No 53 339 120.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 04/04/2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 04/04/2006 to 03/04/2011 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 16: Books, newspapers, periodicals, handbooks, instructional and teaching materials (except apparatus).

Class 41: Education and training services, organization of competitions (education), arranging and conducting of conferences, colloquiums, congresses, seminars, symposiums, organization of training workshops, publication of books and handbooks, professional orientation (consultation in the field of education or training), organization of exhibitions for educational purposes.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 25/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/06/2016 to submit evidence of use of the earlier trade mark. At the opponent’s request, the deadline was extended until 25/08/2016. On 02/08/2016 and 24/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• A printout of the opponent’s website, www.mba-ebs.com, presenting EBS Paris (Annex A).

• Five attestations (and their translations) by a chartered accountant, Mr Philippe Bontemps, according to which the turnover of the European Business School was EUR 4 938 797 in 2006, EUR 5 337 218 in 2007, EUR 6 376 763 in 2008, EUR 8 095 375 in 2009 and EUR 9 243 075 in 2010, along with an extract from the online directory of the Order of French Chartered Accountants, showing that Mr Philippe Bontemps is an independent chartered accountant (Annex B).

• Six extracts of the first page of the EBS Newsletter, dated between 02/11/2008 and 08/11/2011, containing information about EBS training and educational services and current EBS news and depicting the mark (Annex C).

• Several brochures presenting the educational and training services offered under the mark EBS, such as masters in sport management, business administration, and luxury and fashion management, courses on marketing, management, business intelligence and French summer schools, dated between 2007 and 2011, depicting the mark (Annex D).

• An extract from the EBS Newsletter, offering information about the annual conference organised by the director and the EBS Alumni Association in Issy-les-Moulineaux on 25/03/2016 (Annex E1).

• An extract from the EBS Newsletter that reproduces pages of the magazine L’Etudiant, which published a ranking of business schools in which EBS was mentioned as being among the most famous business schools, in particular that EBS is ranked in fifth place among the five-year schools, with 7 000 alumni, many of whom feature in the 2010 edition of Who’s Who (Annex E2).

• Several invitations to EBS events and conferences, dated between 2007 and 2010, depicting the mark (Annexes E3-E6 and E9).

• A press review of the profile of the European Business School in newspapers and magazines from January to April 2010 (Annex E7).

• A guide explaining how to apply for the EBS entrance exams for the 2006/2007 school period, depicting the mark (Annex E8).

• The cover page of the 2008 directory of EBS alumni (Annex E10).

• A declaration in lieu of Odile Launay, president of the European Business School from 1994 to 2013, in which she declares and confirms that, during the time when he was president of the European Business School, in particular from 2005 to 2011, French trade mark No 53 391 120, ‘EBS’, was used in particular for printed matter, educational and training services, publication services and organisation of conferences by the European Business School, with the consent of the proprietor of the mark, Groupe Europeen de Formation (Annex F).

The chartered accountant’s attestations, the extracts of the newsletters, the presentation brochures and the press articles, especially the article from L’Etudiant, show that the place of use is France. This can be inferred from the language of the documents (French), the currency mentioned (euros) and some addresses in France. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the attestations of the chartered accountant and the article from L’Etudiant, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s trade mark was used as it was registered, namely , alone or in combination with EUROPEAN BUSINESS SCHOOL.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services, namely education and training services. The fact that the opponent marketed its services under the mark , on printed brochures or organising conferences, does not show that it is actually using its trade mark for printed matter, publication services or organisation of conferences. Apart from the declaration of the former president that the mark was used for the abovementioned goods and services, no other evidence was submitted to prove this aspect.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 41: Education and training services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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.

1. The goods and services

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

Class 41: Education and training services.

The contested goods and services are the following:

Class 16: Instructional and teaching material (except apparatus); plastic materials for packaging, included in class 16; paper, cardboard and goods made from these materials, included in class 16; photographs; stationery; office requisites (other than furniture).

Class 41: Providing of training; educational services; correspondence courses; further education; language teaching services; sporting and cultural activities; management of an institute of higher education (education and training); arranging and conducting of congresses, conferences and lectures; making available of electronic publications (not downloadable); vocational guidance; recording and television studio services; services of a publishing house (excluded printing services);publication of published and printed matter, including books and periodicals (other than for advertising purposes), including in electronic form, including on the internet; rental of films and sound recordings; film production; translation services; training consultancy and further training consultancy and education consultancy.

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; technical project management in the field of electronic data processing; scientific services, namely informatics services, services of an economist, services of a social scientist; conducting research projects, included in class 42; surveying and technical consultancy, including in the field of informatics.

Class 45: Legal services; services of jurists; legal services.

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 16

The contested instructional and teaching material (except apparatus) is essential to the opponent’s education and training services. Therefore, these goods and services are complementary. This is because in order to supply education and training services it is both helpful and usual to use instructional and teaching material. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

As regards the remaining contested goods in Class 16, plastic materials for packaging, included in Class 16, paper, cardboard and goods made from these materials, included in Class 16; photographs; stationery, office requisites (other than furniture), as these goods are mainly paper, goods made from that material and office requisites, they have nothing in common with the services of the earlier right, which are rendered by persons or institutions concerned with the development of mental faculties or are intended to entertain and to engage the attention, and therefore it has not been possible to establish any degree of similarity. The nature of the goods is different from that of the opponent’s services, they are not provided by the same undertakings, they have a different public, they do not have the same purpose and they are neither in competition nor complementary. The remaining goods in Class 16 are therefore dissimilar to the services of the earlier right.

Contested services in Class 41

Providing of training; educational services are identically contained in both lists of services (including synonyms).

The contested correspondence courses; further education; language teaching services; vocational guidance are included in the broad categories of the opponent’s education and training services. Therefore, they are identical.

The contested arranging and conducting of congresses, conferences and lectures overlap with the opponent’s education and training services, as the applicant’s services could be provided through congresses, conferences and lectures. Therefore, they are identical.

The contested management of an institute of higher education (education and training); training consultancy and further training consultancy and education consultancy and the opponent’s education and training services have the same distribution channels and the same origin as the opponent’s education and training services. They are also rendered in combination and are, therefore, considered similar.

The contested sporting and cultural activities are similar to a low degree to the opponent’s education and training services. The contested services can be provided by the same undertakings that provide education and training services. These services can target the same relevant public and they can coincide in their purpose.

The contested making available of electronic publications (not downloadable); recording and television studio services; services of a publishing house (excluded printing services); publication of published and printed matter, including books and periodicals (other than for advertising purposes), including in electronic form, including on the internet; rental of films and sound recordings; film production; translation services have different natures and purposes to the services of the earlier trade mark. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that they come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical project management in the field of electronic data processing; scientific services, namely informatics services, services of an economist, services of a social scientist; conducting research projects, included in class 42; surveying and technical consultancy, including in the field of informatics are not sufficiently related to the opponent’s education and training services. They have a different nature, purpose and method of use. Their suppliers, consumers and distribution channels do not match, and they are neither complementary nor in competition with each other. Therefore, these services are dissimilar.

Contested services in Class 45

The contested legal services (listed twice); services of jurists are specific legal services and, therefore, are not sufficiently related to the opponent’s education and training services. They have a different nature, purpose and method of use. Their suppliers, consumers and distribution channels do not match, and they are neither complementary nor in competition with each other. Therefore, these services are dissimilar.

2. 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 at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, as is the case for management of an institute of higher education (education and training).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both marks are figurative marks. The earlier trade mark consists of the three letters ‘ebs’ in a stylised typeface. The contested sign consists of the three letters ‘EBS’ in bold upper case letters, with three bold blue horizontal lines to the right of the letters.

The earlier sign has no elements that could be considered clearly more distinctive or dominant than other elements.

As regards the contested sign, it is composed of a distinctive verbal element, ‘EBS’, and a less distinctive figurative element consisting of three horizontal lines of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs have the same letter sequence, ‘ebs’. The differences consist in the slightly stylised typeface of the marks, as well as the colour and figurative element of the contested sign.

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

Aurally, the figurative elements will not be taken into account. The signs are both pronounced ‘ebs’. Therefore, they are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. Consumers’ degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly similar, partly similar to a low degree and partly dissimilar.

Taking into account the average degree of visual similarity between the signs, the aural identity, the average degree of distinctiveness of the earlier trade mark and the partly identical and partly similar goods, there is, even for a public with a high degree of attentiveness, a likelihood of confusion. This is even more the case when the public’s degree of attention is only average. There is also a likelihood of confusion for the goods and services that are similar to only a low degree, because of the clear and considerable coincidences between the signs.

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. Therefore, the relevant public will assign the origin of the goods and services provided under the marks to the same undertaking or economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character, given that there are many trade marks that include ‘EBS’ registered at national, European or international levels, without giving details about these previous registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘EBS’. Under these circumstances, the applicant’s claims must be set aside.

The applicant argues, further, that its EUTM has reputation and refers to a website on which the services are offered. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Therefore, the opposition is partially well founded under Article 8(1)(b) EUTMR on the basis of the opponent’s French trade mark registration. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Plamen IVANOV

Francesca DINU

Dorothée SCHLIEPHAKE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.