OPPOSITION No B 2 353 046

O2 Worldwide Limited, 20 Air Street, W1B 5AN, London, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD, Cambridge, United Kingdom (professional representative)

a g a i n s t

Cheetah Mobile Inc., PO Box 309, Ugland House, KY1 1104 Grand Cayman, Cayman Islands (applicant), represented by Greenberg Traurig LLP, Leidseplein 29,1017 PS Amsterdam, Netherlands (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 353 046 is upheld for all the contested services.

2. European Union trade mark application No 12 229 803 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 12 229 803 for the word mark ‘SKETCH GURU’. The opposition is based on, inter alia, the European Union trade mark registration No 10 245 942 for the word mark ‘GURU TV’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to this earlier right. In relation to the remaining earlier rights, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 245 942.

a) The services

In the notice of opposition the opponent decided to base its case on all the goods and services for which the earlier EUTM No 10 245 942 is registered. Therefore, the services on which the opposition is based are, inter alia, the following:

Class 35: Advertising; business management; business administration; office functions; retail services and online retail services relating to scientific, nautical, surveying, photographic, cinematographic, optical weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, 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, apparatus for the transmission of sound or image, telecommunications apparatus, mobile telecommunication apparatus, mobile telecommunications handsets, computer hardware, computer software, computer software downloadable from the Internet, PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers, telecommunications network apparatus, drivers software for telecommunications networks and for telecommunications apparatus, protective clothing, protective helmets, computer software recorded onto CD-Rom, SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic publications (downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone cases, magnetic cards, encoded cards; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network; rental of advertising time on communication media; Advertising space (rental of-); advice for consumers (commercial information and-) [consumer advice shop]; Auctioneering; business investigations; business research; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; communication media (presentation of goods on-), for retail purposes; comparison services (price-); consumers (commercial information and advice for-) [consumer advice shop]; economic forecasting; evaluation of standing timber; evaluation of standing timber; evaluation of wool; exhibitions (organization of-) for commercial or advertising purposes; forecasting (economic-); grading of wool; import export agencies; information agencies (commercial-); investigations (business-); marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; office machines and equipment rental; office machines and equipment rental; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; polling (opinion-); presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; psychological testing for the selection of personnel; public relations; publicity material rental; rental (office machines and equipment-); rental (publicity material-); rental of advertising space; rental of photocopying machines; rental of vending machines; research (business-); retail purposes (presentation of goods on communication media, for-); shop window dressing; sponsorship search; timber (evaluation of standing-); timber (evaluation of standing-); trade fairs (organization of‑) for commercial or advertising purposes; valuation of standing timber; vending machines (rental of-); psychological testing for the selection of personnel.

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; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; technical consulting and expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network; Authenticating works of art; cloud seeding; computer hardware (consultancy in the field of-); computer rental; conversion of data or documents from physical to electronic media; design services (packaging-); designing (dress-); dress designing; graphic arts designing; packaging design; rental of computer software; rental of web servers.

Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; legal services; management and exploitation of copyright; arbitration services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network; consultancy (security-); fire alarms (rental of-); fire extinguishers (rental of-); rental of fire alarms; rental of fire extinguishers; security consultancy.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Accounting; Administrative processing of purchase orders; Advertising by mail order; Advisory services for business management; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Auctioneering; Bill-posting; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Commercial or industrial management assistance; Compilation of information into computer databases; Compilation of statistics; Computerized file management; Cost price analysis; Data search in computer files for others; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Drawing up of statements of accounts; Economic forecasting; Employment agencies; Import-export agencies; Invoicing; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; Office machines and equipment rental; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services [business assistance]; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Price comparison services; Procurement services for others [purchasing goods and services for other businesses]; Production of advertising films; Professional business consultancy; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Rental of photocopying machines; Rental of vending machines; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; Word processing; Writing of publicity texts; Advertising services.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Analysis for oil-field exploitation; Architectural consultation; Architecture; Authenticating works of art; Bacteriological research; Biological research; Calibration [measuring]; Chemical analysis; Chemical research; Chemistry services; Clinical trials; Cloud seeding; Computer rental; Computer software consultancy; Computer system analysis; Computer system design; Computer virus protection services; Construction drafting; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Conversion of data or documents from physical to electronic media; Cosmetic research; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Design of interior decor; Digitization of documents [scanning]; Dress designing; Duplication of computer programs; Energy auditing; Engineering; Geological prospecting; Geological research; Geological surveys;   Handwriting analysis [graphology]; Hosting computer sites [web sites]; Industrial design; Information technology [IT] consulting services; Installation of computer software; Land surveys; Maintenance of computer software; Material testing; Mechanical research; Monitoring of computer systems by remote access; Oil-field surveys; Oil prospecting; Oil-well testing; Packaging design; Physics [research]; Providing search engines for the internet; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Quality control; Quality evaluation of wool; Quality valuation of standing timber; Recovery of computer data; Rental of computer software; Rental of web servers; Research and development of new products for others; Research in the field of environmental protection; Scientific laboratory services; Scientific research; Server hosting;   Styling [industrial design]; Surveying; Technical project studies; Technical research; Textile testing; Underwater exploration; Updating of computer software; Urban planning; Vehicle roadworthiness testing; Water analysis; Weather forecasting; Web site design consultancy.

Class 45: On-line social networking 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 services in Class 35

The contested, inter alia, Advertising; Business management; Business administration; Office functions; Auctioneering; Business investigations; Business research; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Economic forecasting; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; Office machines and equipment rental; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Price comparison services; Procurement services for others [purchasing goods and services for other businesses]; Rental of photocopying machines; Rental of vending machines are identically mentioned in the opponent’s specification.

The contested Advertising services are identical to Advertising because they are synonyms.

Furthermore, as mentioned above, the contested Advertising; Business management; Business administration; Office functions are identically included in the opponent’s specification. Consequently, the following services are either identical or similar to the opponent’s above mentioned broad categories of services:

Accounting; Administrative processing of purchase orders; Advertising by mail order; Advisory services for business management; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Bill-posting; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Commercial or industrial management assistance; Compilation of information into computer databases; Compilation of statistics; Computerized file management; Cost price analysis; Data search in computer files for others; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Drawing up of statements of accounts; Economic forecasting; Employment agencies; Import-export agencies; Invoicing; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services [business assistance]; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Production of advertising films; Professional business consultancy; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; Word processing; Writing of publicity texts.

In particular, the vast majority of the contested services fall under the opponent’s Advertising; Business management; Business administration; Office functions and therefore they are identical because they are either included in them or they overlap with those broad categories (e.g. Advertising by mail order, Accounting, Business auditing, Professional business consultancy, etc.). The remaining contested services are at least similar to these broad categories of the opponent’s services (e.g. Employment agencies; Tax preparation; Relocation services for businesses) because they share the same purpose and they usually coincide in the relevant public and the companies offering the relevant services.

The contested Arranging newspaper subscriptions for others belong to the day-to day services of the contemporary company. They are similar to the opponent’s broad category of business administration services in Class 35. The purpose of those services is the same, namely to help companies to perform the tasks necessary for their commercial activity. They are aimed at the same public and their suppliers and distribution channels can be the same as well.

The contested Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies have some relevant points in common with the opponent’s retail services and online retail services relating to life-saving apparatus and instruments. The services have the same nature (retail services), the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they are complementary. The contested wholesaling services refer to selling goods to other undertakings (retailers), which then sell the goods to end consumers. Even though the relevant public and distribution channels are different from those of retail services, they have the same nature and purpose. Furthermore, their method of use may also be the same. They are similar.

Contested services in Class 42

The contested Authenticating works of art; Dress designing; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Computer system analysis; Computer system design; Computer rental; Computer software consultancy; Conversion of data or documents from physical to electronic media; Cloud seeding; Duplication of computer programs; Installation of computer software; Maintenance of computer software; Packaging design; Recovery of computer data; Rental of computer software; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Hosting computer sites [web sites]; Installation of computer software; Rental of web servers; Updating of computer software; Weather forecasting are identically mentioned in the opponent’s specification.

The contested Computer virus protection services; Digitization of documents [scanning]; Information technology [IT] consulting services; Monitoring of computer systems by remote access; Providing search engines for the internet; Server hosting; Web site design consultancy are included in the broad category of the opponent’s IT services. Therefore, these services are identical.  

The contested Consultancy in the design and development of computer hardware overlap with the opponent’s information and advisory services in relation to the aforesaid services provided over a telecommunications network (design and development of computer hardware). These services are identical.

The contested Engineering is identical to the opponent’s services of engineers, albeit expressed in slightly different wording.

The contested Architectural consultation; Architecture; Analysis for oil-field exploitation; Calibration [measuring]; Chemical analysis; Chemistry services; Clinical trials; Construction drafting; Consultancy in the field of energy-saving; Energy auditing; Geological prospecting; Geological research; Geological surveys;   Land surveys; Material testing; Oil-field surveys; Oil prospecting; Oil-well testing; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Surveying; Technical project studies; Textile testing; Underwater exploration; Urban planning; Vehicle roadworthiness testing; Water analysis refer to services in which the application of knowledge, typically in the fields of mathematics, and empirical evidence, to the innovation, design, construction, operation and maintenance of structures, machines, materials, devices, systems, processes, and organizations is essential. For these reasons, the above services are included in the broad category of the opponent’s services of engineers. Therefore, they are identical.

The contested Design of interior decor; Styling [industrial design] are included in the broad category of the opponent’s graphic arts designing and, therefore, they are identical.

The contested Bacteriological research; Biological research; Chemical research; Mechanical research; Cosmetic research; Industrial design; Physics [research]; Research and development of new products for others; Research in the field of environmental protection; Scientific laboratory services; Scientific research; Technical research are included in the broad categories of the opponent’s Scientific and technological services and research and design relating thereto; Industrial analysis and research services. Consequently, these service ae identical.

The contested Handwriting analysis [graphology] is the analysis of the physical characteristics and patterns of handwriting claiming to be able to identify the writer, indicating psychological state at the time of writing, or evaluating personality characteristics. Therefore, these services are similar to the opponent’s Scientific services and research and relating thereto. They may be provided by the same companies, and their distribution channels and the end users may also be the same. Furthermore, they may be complementary.

The contested Quality control; Quality evaluation of wool; Quality valuation of standing timber refer to the processes by which entities review the quality of all the factors involved in production, such as in the contested services, wool or standing timber. These services are similar to the opponent’s industrial analysis and research services to the extent that they can coincide in providers, distribution channels and end users.

Contested services in Class 45

The contested On-line social networking services are included in the broad category of the opponent’s Personal and social services rendered by others to meet the needs of individuals. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at both the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public may vary from average to high, depending on the specialised nature of the services, the frequency of their purchase and their price.

c) The signs

GURU TV	SKETCH GURU
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the marks are meaningful for some parts of the relevant public, such as the English-speaking part of the public, and there may be conceptual differences between the marks for that part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the French-speaking consumers.

Both marks are word marks.

As a whole, the word combinations ‘GURU TV’ and ‘SKETCH GURU’ have no clear univocal meanings for the relevant public and are not used in common parlance. Therefore, they will be perceived as the mere combination of their elements.

The term ‘GURU’ present in both signs will be understood as a ‘Hindu spiritual master, around whom disciples are grouped’ (information extracted from Larousse dictionary on 24/01/2019 at www.larousse.fr) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The element ‘TV’ of the earlier mark will be associated with ‘television’. Bearing in mind that some of the relevant services refer to data processing apparatus in Class 35, this element is non-distinctive for them. Furthermore, taking into account the relevant advertising services in Class 35, which include advertisements in digital media, in particular, TV advertisements (e.g. Television advertising) and for some services in Class 42 (e.g. IT services; computer programming; technical support services relating to telecommunications and apparatus; information and advisory services in relation to the aforesaid services provided over a telecommunications network), it is considered that this element is weak for these services because it is suggestive of the functionalities of the services. In relation to the remaining relevant services this element is distinctive to an average degree.

The term ‘SKETCH’ of the contested sign will be associated with ‘a short-lived, generally comical dialogue work, performed in the theatre or at the music hall’. (information extracted from Larousse dictionary on 24/01/2019 at www.larousse.fr)

Taking into consideration the fact that some of the contested services in Class 42 refer to artistic activities, (e.g. Authenticating works of art) the element ‘SKETCH’ is likely to be perceived as an allusion to the services involving creation and consequently, it is considered weak in relation to them. This element is normally distinctive in relation to the remaining services.

Visually, the signs coincide in the element ‘GURU’. However, they differ in the elements ‘TV’ contained in the earlier mark and ‘SKETCH’ in the contested sign, which have been considered to be weak for at least part of the relevant services. Therefore, taking into account that the signs contain two verbal elements, being the coinciding element ‘GURU’ the most distinctive, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables /gu-ru/, present identically in the conflicting signs. This coincidence belongs also to the element which is normally distinctive in both signs in relation to all the relevant services. The pronunciation differs in the sound of the letters /tv/ of the earlier mark and in the syllable /sketch/ of the contested sign, which have no counterparts in the other sign and they have been found weak for at least part of the services in question.

Considering the remarks as regards the inherent distinctiveness of the differing components, the signs are similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning due to the main coincidence in the distinctive element ‘GURU’. Bearing in mind the limited impact of the respective elements ‘TV’ and ‘SKETCH’ within the signs for part of the relevant services, they are considered conceptually similar to a high 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element at least for a part of the relevant services, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the conflicting services have been found partly identical and partly similar.

The earlier mark enjoys an average degree of distinctiveness.

The signs are visually and aurally similar to a high degree. As argued by the opponent, the main similarity between the signs results from the fact that they contain the identical term ‘GURU’. In reference to this element, the signs also convey a highly similar semantic concept. The visual, aural and conceptual differences between them lie only in the additional elements ‘TV’ of the earlier mark and ‘SKETCH’ of the contested mark, which have been found weak in relation to certain services.

The coinciding element in question, ‘GURU’, is normally distinctive for all the relevant services. Therefore, the relevant French-speaking consumers might legitimately assume that the contested sign is a new version or brand-line, originating from the same undertaking responsible for the ‘GURU’ services branded under the earlier mark.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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).

Therefore, taking into account the aforementioned, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are clearly enough to outweigh the differences between the signs and they are likely to lead the relevant public to believe that the conflicting identical and similar services come from the same undertaking or economically linked undertakings, despite a possible higher level of attention for some services.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 245 942. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registration No 10 245 942, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 10 245 942 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Carlos MATEO PEREZ

Monika CISZEWSKA

Marta GARCIA COLLADO

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.