OPPOSITION No B 2 444 084

O2 Holdings Limited, 260 Bath Road, Slough, Berkshire SL1 4DX, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Jusan Network SRL, Via Frejus 49, 10139 Turin, Italy (applicant), represented by Riadi Piacentini, Via Modigliani 7, 10137 Turin, Italy (professional representative).

On 29/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 444 084 is upheld for all the contested services.

2. European Union trade mark application No 13 149 224 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 13 149 224. The opposition is based on, inter alia, European Union trade mark registration No 10 245 942. The opponent invoked Article 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.

1. The services

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.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services, television programming services; television production and television programming services provided by means of Internet protocol technology; provision of entertainment by means of television and Internet protocol television; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; 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.

Class 42: IT services; rental of computer software.

The contested services are the following:

Class 35: Web site traffic optimization; promotion, advertising and marketing of on-line websites; consultancy services regarding business strategies; marketing services; promotional marketing; direct marketing; marketing by telephone; provision of information relating to marketing; product marketing; market research; conducting of marketing studies; conducting of marketing studies; marketing services; advertising and marketing; business marketing services; direct marketing; estimations for marketing purposes; personnel management of marketing personnel; marketing agency services; planning of marketing strategies; marketing forecasting; marketing assistance; preparation of marketing plans; market research; analysis relating to marketing; conducting of marketing studies; organisation of events for commercial and advertising purposes; business management; advice and information concerning commercial business management; assistance to commercial enterprises in the management of their business; provision of commercial information; provision of business information; providing business information via a web site.

Class 41: Providing of training; Professional training services; Educational services relating to business; Computer training; Educational instruction; Industrial training; Training of teachers; Provision of training and education; Provision of training and education; Coaching [training]; Training services; Personnel training; Training in electronics; Tuition in law; Provision of training courses; Provision of tuition; Technological education services; Education information; Bibliographic information; Entertainment information.

Class 42: Providing information on computer technology and programming via a web site; computer website design; web site design and creation services; website design services; designing websites for advertising purposes; web site design consultancy; creating, designing and maintaining web sites; design and creating web sites for others; design and maintenance of web sites for others; creation, design, development and maintenance of web sites for third parties; website development for others; web site design consultancy; website usability testing services; maintenance of websites and hosting on-line web facilities for others; hosting services and software as a service and rental of software; design, creation, hosting and maintenance of internet sites for third parties; hosting the computer sites (web sites) of others; hosting websites on the internet; hosting of internet sites; hosting of websites.

Earlier European Union trade mark No 10 245 942 is registered for the entire class heading of Class 35 of the Nice Classification. It was filed on 07/09/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

Contested services in Class 35

Advertising; business management are identically contained in both lists of services.

The opponent’s advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested promotion, advertising and marketing of on-line websites; marketing services (listed twice); promotional marketing; direct marketing (listed twice); marketing by telephone; provision of information relating to marketing; product marketing; market research; conducting of marketing studies (listed twice); marketing; business marketing services; estimations for marketing purposes; marketing agency services; planning of marketing strategies; marketing forecasting; marketing assistance; preparation of marketing plans; market research; analysis relating to marketing; conducting of marketing studies are identical to the opponent’s advertising, because the opponent’s services include, are included in or overlap with the contested services.

The opponent’s business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested consultancy services regarding business strategies; advice and information concerning commercial business management; assistance to commercial enterprises in the management of their business; provision of business information; providing business information via a web site are services aimed at providing information and consultancy on how to successfully run a business. These services are, therefore, included in the broader category of the opponent’s business management, or they overlap with it. It follows that the services are identical.

The opponent’s business administration are services consisting of organising people and resources efficiently to direct activities toward common goals and objectives. These services are performed to plan, organise and run a business and include the provision of information in relation to these services. These services, therefore, include as a broader category the contested provision of commercial information (which includes providing information about commercial activities required for the running of the business) and personnel management of marketing personnel (which includes the everyday organisation of a specific type of staff). It follows that the services are identical.

The contested web site traffic optimization includes activities of providing advice and information aimed at increasing traffic to the website of a company/product and thus attracting the attention of the consumer to the company/product. These services, therefore, overlap with the opponent’s advertising. It follows that the services are identical.

The contested organisation of events for commercial and advertising purposes includes the organisation of different types of events, including, for instance, exhibitions. Therefore, these services include as a broader category the opponent’s organization of exhibitions for commercial or advertising purposes, which are included in the alphabetical list of Class 35 (of the ninth edition of the Nice Classification), covered by the earlier mark. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 41

The contested providing of training; professional training services; educational services relating to business; computer training; educational instruction; industrial training; training of teachers; provision of training and education (listed twice); coaching [training]; training services; personnel training; training in electronics; tuition in law; provision of training courses; provision of tuition; technological education services are all educational services. They are identical to the opponent’s education; providing of training either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested bibliographic information is a service involving assisting readers to find printed or online literature (of any type, including for educational purposes) and could also involve providing access to certain information on literature through a library portal. These services, therefore, overlap with the opponent’s information services relating to education, training and cultural activities provided by means of telecommunication networks. It follows that these services are identical.

The contested education information includes as a broader category the opponent’s information services relating to education provided by means of telecommunication networks. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested entertainment information includes as a broader category the opponent’s information services relating to entertainment provided by means of telecommunication networks. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 42

The contested rental of software is synonymous with the opponent’s rental of computer software. These services are, therefore, identical.

The opponent’s IT services include a whole range of services encompassing the creation of, maintenance of and provision of support for any technology that involves the development, maintenance or use of computer systems, software or networks for the processing and distribution of data. These services, therefore, include as a broader category, or at least overlap with, all of the following contested services: providing information on computer technology and programming via a web site; computer website design; web site design and creation services; website design services; designing websites for advertising purposes; web site design consultancy; creating, designing and maintaining web sites; design and creating web sites for others; design and maintenance of web sites for others; creation, design, development and maintenance of web sites for third parties; website development for others; web site design consultancy; website usability testing services; maintenance of websites and hosting on-line web facilities for others; hosting services and software as a service; design, creation, hosting and maintenance of internet sites for third parties; hosting the computer sites (web sites) of others; hosting websites on the internet; hosting of internet sites; hosting of websites. It follows that these services are identical.

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 services found to be identical are directed at the public at large, as well as at business customers searching for business solutions. The degree of attention may vary from average to higher than average.

3. The signs

GURU TV
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, consisting of the elements ‘GURU’ and ‘TV’. The element ‘GURU’ will be perceived as referring to ‘a Hindu spiritual teacher or head of a religious sect. Also in gen. or trivial use: an influential teacher; a mentor; a pundit’ (Oxford English Dictionary (OED) online). The element ‘TV’ of the earlier mark will be understood by the relevant part of the public as ‘abbrev. of television’ (OED online). As a whole, ‘GURU TV’ could be perceived as referring to a television channel or programme named ‘GURU’ or even as a ‘television that is meant to teach or mentor on certain matters’.

The contested sign is a figurative mark containing the element ‘ecommerceguru’, written in a bold italic typeface. This element is preceded by a device consisting of a large stylised lower case letter ‘e’ with a small decorative curve above it and a larger one below it; thus the entire element could be seen as the letter ´e´ and placed over it a lower case letter ´g´ (as the device further resembles the style of the letter ´g´ of the element ´ecommerceguru´). The relevant part of the public is likely to perceive the element ‘ecommerceguru’ as a juxtaposition of the word ‘ecommerce’ in the meaning of ‘commercial activity conducted via electronic media, esp. on the Internet; the sector of the economy engaged in such activity’ (OED online) and the word ‘guru’ in the meaning specified above. It is likely that the element ‘ecommerceguru’ as a whole will be perceived as referring to a person who is knowledgeable in the area of ecommerce. Furthermore, the figurative element depicting the letter ‘e’ and the letter ‘g’ is likely to be understood as referring to and thus underlining the meaning of the components ‘ecommerce’ and ‘guru’.

The element (or component) ‘GURU’, present in both signs, may be perceived as meaning ‘an influential teacher; a mentor; a pundit’. Bearing in mind that some of the relevant services are education, training and information services in Classes 35, 41 and 42, it is considered that this element is weaker than average for these services, as it refers to their nature, namely to the provision of knowledge and information on certain matters.

The element ‘TV’ of the earlier mark will be associated with ‘television’. It should be noted that the abbreviation ‘TV’ used to indicate that something is television-related has become so prevalent nowadays that, when used in relation to any goods or services, it is likely to be understood that they are the subject matter of a television programme or an entire television station. It is therefore concluded that the element ‘TV’ of the earlier mark is weak for all of the relevant services, as it generally refers to the means of providing the services or disseminating information about them.

The component ‘ecommerce’ in the contested sign will be associated with ‘commercial activity conducted via electronic media’. Bearing in mind that the relevant services are services in Classes 35, 41 and 42, which involve activities provided via electronic media and/or creating events or materials that can be marketed through ecommerce, and/or which can be related to education or information about ecommerce, this element is considered weak for all of the relevant services, as it refers to their nature, subject matter or purpose.

Neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the element (or component) ‘GURU’, present in both signs, which is weaker than normal for some of the relevant services. However, they differ in the element ‘TV’ (which is weak for all the relevant services) of the earlier mark and in the component ‘ecommerce’ (which is weak for all the relevant services), the figurative element depicting the letters ‘e’ and ‘g’ and the typeface of the contested sign.

When signs consist of both verbal and figurative components (as does the contested sign), 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; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). It follows that the figurative depiction of the letters ‘e’ and ‘g’ in the contested sign is less likely to attract the attention of the relevant consumer and, even if it had the same impact as the verbal element, it would probably be perceived as merely referring to the first letters of the components ‘ecommerce’ and ‘guru’ of this verbal element, thus reinforcing the verbal element.

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

Aurally, the pronunciation of the signs coincides in the sound of the element (or component) ‘GURU’, present identically in both signs. The pronunciation differs in the sound of the element ‘TV’ of the earlier mark and of the component ‘ecommerce’ in the contested sign. The figurative depiction of the letters ‘e’ and ‘g’ in the contested sign is likely to be perceived as referring to the first letters of the components ‘ecommerce’ and ‘guru’, and therefore is not likely to be pronounced separately.

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

Conceptually, the relevant part of the public will perceive the elements ‘GURU’ and ‘TV’ of the earlier sign as having the meanings specified above and the sign as a whole as referring to a television channel or programme named ‘GURU’ or even as a ‘television that is meant to teach or mentor on certain matters’. The components ‘ecommerce’ and ‘guru’ of the contested sign will be perceived as having the meanings specified above and the entire sign will be perceived as referring to a person who is knowledgeable in the area of ecommerce. The signs coincide in the concept of ‘guru’ (which is weaker than normal for the relevant services) and differ in the concepts of the element ‘TV’ (which is weak for the relevant services) of the earlier mark and the component ‘ecommerce’ (which is weak for the relevant services) of the contested sign.

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

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

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’).

As explained above in section c) of this decision, the element ‘GURU’ is weaker than normal for education, training and information services in Classes 35, 41 and 42, and the element ‘TV’ is weak for all the relevant services; therefore, as a whole, the earlier mark is of less than normal distinctiveness for education, training and information services in Classes 35, 41 and 42. The mark has a normal degree of distinctiveness for the remaining services in relation to which it has no meaning from the perspective of the English-speaking public in the relevant territory.

Therefore, the distinctiveness of the earlier mark must be seen as normal for some services and weaker than normal for others.

5. Global assessment, other arguments and conclusion

The contested services are identical to the opponent’s services. The degree of attention may vary from average to higher than average when choosing the relevant services.

The signs coincide visually, aurally and conceptually in the element (or component) ‘GURU’, which forms the entire first element of the earlier mark and is placed after the component ‘ecommerce’ of the contested sign; ‘GURU’ is weaker than normal for some of the relevant services, namely for those with an educational or informative character. The element ‘TV’ of the earlier mark is weak for all the relevant services.

The applicant argues that the earlier trade mark has a low degree of distinctive character. The Opposition Division agrees that the earlier sign is of less than normal distinctiveness for part of the relevant services, but this cannot prevent the opposition against these services from succeeding. This is because, even though the element ‘GURU’ is weaker than normal for some of the services at stake, account must be taken of the fact that the finding of a weaker than normal distinctive character of a coinciding element does not automatically prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark and the coinciding elements must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or a coinciding element of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com).

Even though the relevant public will perceive a concept in the element (or component) ‘GURU’ in both signs, and it is weaker than normal (although not descriptive) for some of the services at issue, it retains a certain degree of distinctiveness. Moreover, the other component, ‘ecommerce’, of the contested sign is weak for all the relevant services for the relevant part of the public, which will understand it to refer to electronic commercial activity, as explained above. Therefore, the component ‘ecommerce’ would not on its own serve in trade to distinguish the services of one undertaking from those of another undertaking, as it refers to the nature, subject matter or purpose of the services at issue, namely that they provide education or information about ecommerce and/or creating objects for ecommerce purposes. Furthermore, the component ‘ecommerce’ of the contested sign will be perceived as qualifying the concept of the second component, namely ‘guru’; it defines the area in which the ‘guru’ is considered knowledgeable or operates, namely the field of ecommerce.

The figurative depiction of the letters ‘e’ and ‘g’ in the contested sign, although of normal distinctiveness, is a figurative element and, as explained above, the verbal component of a sign usually has a stronger impact on the consumers’ perception than the figurative component. Even if the figurative element had the same impact on the consumer as the verbal element, it would probably be perceived as merely referring to the first letters of the components ‘ecommerce’ and ‘guru’ of the contested sign, thus reinforcing the verbal components. Furthermore, although the contested sign uses a particular typeface, it is not particularly distinctive.

It follows that the differing figurative element and verbal component of the contested sign are either less distinctive than the coinciding element ‘GURU’ (in the case of the verbal component) or merely reinforce the verbal components (in the case of the figurative element).

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 case at issue, the identity of the services offsets any lesser degree of similarity between the signs.

In addition, likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related undertakings. In the present case, the consumer may easily conclude that the services offered under the contested sign and those offered under the earlier sign come from the same undertaking or from economically-linked undertakings, even where the degree of attention is higher than average.

Considering all the above, there is a likelihood of confusion on the part of the English-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 mark, 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 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(4) and (5) EUTMR.

COSTS

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Plamen IVANOV

Eamonn KELLY

Andrea VALISA

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.