OPPOSITION No B 2 394 545

Fundación Universitaria San Pablo C.E.U., C/ Aracena, 25, 28023 Aravaca - Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Közép-európai Egyetem, Nádor u. 9, 1051 Budapest, Hungary (applicant), represented by Bálint Kállai és Kende Ügyvédi Iroda, Villányi út 47, 1118 Budapest, Hungary (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 394 545 is partially upheld, namely for the following contested goods and services:

Class 16: Adhesives for stationary or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; decoration and art materials and media; disposable paper products; filtering materials of paper; money holders; paper and cardboard; printed matter; stationery and educational supplies; works of art and figurines of paper and cardboard, and architects’ models.

Class 41: Education, entertainment and sports; publishing and reporting; translation.

2. European Union trade mark application No 12 825 717 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 12 825 717 for the word mark ‘CEU Business School’ namely against all the goods and services in Classes 16, 25 and 41. The opposition is based on European Union trade mark registration No 9 394 743 for the figurative mark and Spanish trade mark registration No 2 546 041 for the figurative mark . In the opposition notice the opponent invoked Article 8(1)(b) EUTMR.

As a preliminary remark, although, in its submissions from 18/10/2018 the opponent also invoked Article 8(5) EUTMR, it cannot be taken into account in the present case as it was invoked after the opposition period and is therefore inadmissible (Rule 15(2)(c) EUTMIR in conjunction with Rule 17(4) and (5) EUTMIR in the version in force at the time of entering 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 goods and services on which the opposition is based are the following:

European Union trade mark registration No 9 394 743

Class 9: 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.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; articles of stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing block.

Class 38: Telecommunications.

Class 41: Education; providing of training; providing amusement services; sporting and cultural activities.

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.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services provided by others to meet the needs of individuals.

Spanish trade mark registration No 2 546 041

Class 9: Magnetic record carriers, recording discs, recorded operating system programs (for computers), computer software, CD-ROMS, computer programs (recorded), compact discs (audio-video), electronic publications (electronically downloadable).

Class 16: Publications, periodicals, magazines, books, photographs, stationery, instructional and teaching material (except apparatus).

Class 38: Telecommunications; radio, telephone and telegraphic communications; communications via computer terminals; computer-assisted transmission of messages and images; electronic messaging; communications through global computer networks; radio and television broadcasting; broadcasting of television programs; radio broadcasting.

Class 41: Education, training, entertainment, sports and cultural activities; publication of texts other than publicity texts; publication of books; teaching; information relating to education, entertainment and recreation; arranging and conducting of colloquiums, conferences, seminars and congresses; organization of exhibitions for cultural or educational purposes; film production; editing of videotape and radio and television programs; script-writing, electronic publication of a magazine online.

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, legal services.

The contested goods and services are the following:

Class 16: Adhesives for stationary or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; decoration and art materials and media; disposable paper products; filtering materials of paper; money holders; paper and cardboard; printed matter; stationery and educational supplies; works of art and figurines of paper and cardboard, and architects’ models.

Class 25: Clothing; footwear; headgear.

Class 41: Education, entertainment and sports; publishing and reporting; translation and interpretation.

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 16

The contested adhesives for stationary or household purposes; bags and articles for packaging; wrapping and storage of paper, cardboard or plastics; paper and cardboard; printed matter; stationery and educational supplies; decoration and art materials and media are identical to the opponent’s paper, cardboard; printed matter; adhesives for stationery or household purposes; articles of stationery; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); artists’ materials covered by the EU trade mark No 9 394 43, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Likewise, the contested money holders belong to a broad category of goods under the earlier mark No 9 394 743, namely office requisites (except furniture) and plastic material for packing (not included in other classes) (30/10/2018, R 663/2018‑1, HEBE (fig.) / Hebe et al § 35). Therefore, they are identical.

The contested works of art and figurines of paper and cardboard, and architects’ models have close connections with the opponent’s photographs and artists’ materials covered by the EU trade mark No 9 394 743. Their nature is similar to some extent as at least some of the goods may consist of pictures. Moreover, the contested goods, in the same way as the opponent’s photographs, could have an artistic value. The goods may, therefore, originate from the same providers and could have the same distribution channels (galleries, specialised shops for artists’ materials and works of art). They may also target the same relevant public. Therefore, they are considered similar.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the expression goods made from these materials [paper, cardboard] (present in the opponent’s list of goods and services in the EU trade mark No 9 394 743) does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

When comparing the contested disposable paper products; filtering materials of paper with the opponent’s goods made from these materials [paper, cardboard] (without further examples or an express limitation by the opponent clarifying the term), it cannot be assumed that they have the same purpose, methods of use or distribution channels, or whether they are in competition or complementary. However, their nature can be considered the same as they are paper goods and to that extent these goods can be considered similar to a low degree.

Contested goods in Class 25

The contested clothing, footwear and headgear have nothing in common with the opponent’s goods and services. The fact that the contested goods can be used in connection with some of the opponent’s services is too tenuous a link to determine any degree of similarity. Contrary to what the opponent claims there is no complementarity between the contested goods and the opponent’s sporting activities (covered by both earlier marks). Complementarity between the goods and services exists if there is a close connection between them, in the sense that one is indispensable (essential or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). This is not the case. People perform most of their daily activities wearing clothes. This fact alone does not make clothes complementary to all the services. In fact, since the goods/services are merely used together by choice or convenience, it means that they are not essential for each other (16/12/2013, R 634/2013-4 – ST LAB (FIG. MARK) / ST et al., § 20). Moreover, as it is not common for the manufacturers of these contested goods to render any of the opponent’s services or produce any of the opponent’s goods, the public would not assume that the goods and services under comparison have the same commercial origin. Consequently, they must be considered dissimilar.

Contested services in Class 41

Education, entertainment and sports are identically contained (including synonyms) in the lists of goods of all the trade marks.

The contested publishing and reporting includes, as a broader category, or overlaps with, the opponent’s publication of texts other than publicity texts; publication of books; electronic publication of a magazine online (of the earlier Spanish trade mark registration No 2 546 041).

Moreover, the contested translation may be, inter alia, a related pre-publishing activity, in which the text to be published is translated from a different language (usually the original). These services and the opponent’s publication of texts other than publicity texts; publication of books; electronic publication of a magazine online (for which the Spanish trade mark No 2 546 041 is registered) could have some degree of similarity due to their closely related commercial fields. Bearing in mind that these services may also be complementary to each other, may be rendered by the same companies and distributed through the same distribution channels, they are considered similar to a low degree.

However, the same reasoning does not apply to the remaining contested interpretation. Even though interpretation is closely related to translation, there is a significant difference between these services. In translation services written text is translated into another language (therefore these services may be perceived as pre-publishing), while in interpretation services spoken language is translated orally. Consequently, interpretation services are not related to publishing or any other goods and services covered by the earlier marks. They are highly specialised services, rendered by professionals. Their nature and purpose differ from the ones of opponent’s goods and services. They do not target the same public nor are they normally produced or provided by the same companies. Therefore, they 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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price or terms and conditions of the goods and services purchased.

3. The signs

EUTM No 9 394 743 Spanish registration No 2 546 041	CEU Business School
Earlier trade marks	Contested sign

The relevant territory is the European Union for the earlier mark No 9 394 743 and Spain for the earlier mark No 2 546 041.

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 verbal element ‘CEU’, present in all the marks is meaningless and therefore distinctive.

The expression ‘Business School’ in the contested sign consists of very basic English words, which will be understood in all Member States (including Spain) because of their widespread use. Both words are directly related to a wide range of relevant goods and services, especially educational materials in Class 16 and education and sporting activities in Class 41, as they merely inform the public that the goods and services have an educational, business related purpose. Consequently, these words must be considered non-distinctive in this regard. However, even regarding the goods and services that do not have a direct educational purpose, the abovementioned expression is at most weak. This is because it is not uncommon for schools to put their logos on different goods used within the school or as merchandising articles. In such a case, if the words ‘Business School’ were to appear on such goods, it is likely that the public would just assume that they are linked to an educational institution.

As for the figurative element of the earlier mark No 9 394 743, despite its rather simple shape, a circle with a cross in the middle and its combination of colours, give this element a normally distinctive character. Nevertheless, 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).

The figurative stylisation of the verbal elements ‘CEU’ in the earlier marks and the navy blue rectangle in which the verbal element of the Spanish trade mark No 2 546 041 is depicted, are very simple and non-distinctive.

Visually, the signs coincide in ‘CEU’; which is the only verbal component of the earlier marks entirely incorporated in the contested mark. The marks differ in the non-distinctive or at most weak ‘Business School’ in the contested mark and in the figurative stylisations of the earlier marks (which however, as mentioned above, have a smaller impact on the impression created by the signs).

Therefore, taking into consideration that the distinctive ‘CEU’ is identically reproduced in all the marks and that the additions and omissions of elements in the contested sign (when compared to the earlier marks), have a secondary impact on the overall visual impression created by the marks, the Opposition Division finds the signs highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the element ‘CEU’, which constitutes the earlier marks in their entirety and the first verbal element of the contested sign. The signs differ in the additional words ‘Business School’ of the contested mark, which are however non-distinctive. Moreover, marks which include several words will generally be abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75), it cannot be excluded that at least part of the public will pronounce only the first distinctive element in the contested mark, ‘CEU’. In such a case, the trade marks would be aurally identical. However, even if all the elements of the contested mark are pronounced, the signs are still considered highly similar due to the weak or non-distinctive character of the differentiating elements.

Conceptually, none of the signs has a meaning as a whole. The additional verbal element ‘Business School’ in the contested mark is non-distinctive for part of the goods and services and so cannot identify their commercial origin. The attention of the relevant public will be in this case attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, if the verbal element ‘Business School’ is considered to have a weak distinctive character for some of the goods and services, the concept of an educational establishment will create a small difference between the marks under comparison (as the earlier marks will not create such an association). Therefore, in this case, the signs are not conceptually similar.

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.

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’).

5. 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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services under comparison are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public’s degree of attention is average to high. The signs are visually and aurally similar to a high degree or even aurally identical depending on how the contested mark will be pronounced. Conceptually, the marks are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs. However, it must be stated that the impact of conceptual differences, if they are noticed, is rather limited as the elements creating these differences are at most weak.

The verbal component of the earlier marks is fully included at the beginning of the contested sign. Therefore, there is a visual and aural similarity between the marks (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 27). The additional, non-distinctive or at most weak verbal element ‘Business School’ at the end of the contested sign will not help the consumers to identify the origin of the goods. Moreover, it is a common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them to endow the trade mark with a new, modern image. The consumers are well accustomed to marks being stylised and embellished with logotypes and other devices. Therefore, the relevant consumers may perceive the contested sign as a sub-brand as all marks have the distinctive element ‘CEU’ in common (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union and Spanish trade mark registrations.

Therefore, the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks. The opposition is also successful for the goods and services that are only similar to a low degree as this low similarity of the goods and services is clearly outweighed by the high degree of the similarity of the signs.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Renata COTTRELL

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.