OPPOSITION No B 2 347 568
Edison S.p.A., Foro Buonaparte, 31, 20121 Milan, Italy (opponent), represented by Notarbartolo & Gervasi S.p.A., Corso di Porta Vittoria, 9, 20122 Milan, Italy (professional representative)
a g a i n s t
Heat Trace Limited, Meres Edge, Chester Road, Helsby, Frodsham WA6 ODJ, United Kingdom (applicant), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
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 goods and services
The services on which the opposition is based are the following:
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
The contested goods and services are the following:
Class 16: Printed publications; books, journals, periodicals, magazines; stationery.
Class 41: Education; arrangement of conferences for educational purposes; arrangement of seminars, workshops and exhibitions for educational purposes; publication of books; writing of texts other than publicity texts; educational information and services; instructional services; provision of on-line electronic publications (not downloadable from the internet); production of video-tapes for corporate use in corporate educational training; professional consultancy relating to education; provision of information relating to education; publication of educational material; technological education services.
Some of the contested services are identical to services on which the opposition is based. Furthermore, it is clear that some of the contested goods are similar to services on which the opposition is based (e.g. the contested printed publications, which are essential for the provision of the opponent’s education and have the same distribution channels and relevant consumers). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were similar to the opponent’s services and respectively as if all the contested services were identical to the services of the earlier mark.
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 relevant goods and services are directed at the public at large and at a more specialised public, with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price or nature of the purchased goods and/or services and considering that, for example, consumers are generally rather attentive in relation to education.
Earlier trade mark
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).
Both the earlier mark and the contested sign are figurative trade marks.
The contested sign depicts a moderately stylised, black, lower case letter ‘e’ surrounded by a figurative element composed of three curved lines in red, yellow and green.
The earlier trade mark consists of a combination of thick, green, interlocking lines, which may also be perceived by some consumers as a highly stylised lower case letter ‘e’, the horizontal stroke of which extends above it in a line forming an incomplete circle. Therefore, the Opposition Division finds it appropriate to first examine the opposition in relation to the public that perceives the earlier mark as depicting a highly stylised letter ‘e’. This part of the relevant public would be more likely to confuse the signs, in view of the coincidence in the letter ‘e’, and this scenario therefore constitutes the opponent’s best-case scenario.
The element ‘e’ in both signs is distinctive, since it does not directly describe or allude to any characteristics of the relevant goods and/or services in a manner that would affect the distinctiveness of the signs in a material way. The figurative element also included in the contested sign has, however, a rather decorative role and will therefore be attributed less trade mark significance than the letter ‘e’.
Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
In the present case, it is important to emphasise that the lengths of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression.
Visually, the signs coincide in that they both depict a stylised lower case letter ‘e’. However, they differ in all other aspects, as explained below. In particular, in the earlier mark, the letter ‘e’ is partly surrounded by the stroke that extends above it, while in the contested mark the letter ‘e’ is written in an italic typeface and is partly surrounded by a figurative element. Furthermore, even though the figurative element in the contested sign is less distinctive than the letter ‘e’, it will still not be completely overlooked by consumers. Moreover, the earlier mark is green while the contested sign depicts the letter ‘e’ in black and its figurative element is red, yellow and green. Therefore, the signs are visually similar to a very 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 letter ‘e’. The figurative element of the contested sign will not be pronounced. Therefore, the signs are aurally identical.
Conceptually, the signs are identical, as the relevant public will perceive both signs as a letter ‘e’.
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.
Global assessment, other arguments and conclusion
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).
In the present case, for reasons of procedural economy, the Opposition Division did not undertake a full comparison of the goods and services and assumed that all the contested goods were similar to the opponent’s services and respectively that all the contested services were identical to the those of the earlier mark. They are directed at the public at large and at a more specialised public, whose degree of attention will vary from average to high.
The signs are visually similar to a very low degree and aurally and conceptually identical.
The fact that two trade marks consisting of the same letter are identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (10/05/2011, T‑187/10, G, EU:T:2011:202, § 60).
Therefore, the way the letter ‘e’ appears in each sign is determinant. As stated in section c) above, it is depicted in very different manners in the two signs. Therefore, the signs are visually similar to a very low degree only and, even in spite of the assumed similarity or identity between the goods and services, this is not sufficient to find a likelihood of confusion.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail in respect to the part of relevant public that, due to the high degree of stylisation of the earlier sign, will not perceive the letter ‘e’ in it, as it will be even less prone to confuse the signs.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.