OPPOSITION No B 2 497 645
Cöster & Partner Rechtsanwälte mbB, Theodorstr. 9, 90489 Nürnberg, Germany (opponent), represented by Cöster & Partner Rechtsanwälte mbB, Theodorstr. 9, 90489 Nürnberg, Germany (professional representative)
a g a i n s t
Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (applicant), represented by Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of 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 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 German trade mark registration No 30 669 827.
The goods and services
The services on which the opposition is based are the following:
Class 41: Provision of continuing education and seminars.
Class 42: Legal services.
The contested goods and services are the following:
Class 9: Downloadable electronic publications.
Class 16: Printed matter; printed publications; instructional materials; books; printed reports; newsletters, brochures, guides, manuals, pamphlets and leaflets; information circulars; instructional and teaching materials.
Class 35: Business management consultancy services; business advice services.
Class 41: Education; providing of training; providing of training relating to the provision of legal services; educational services in the field of intellectual property; organisation, conducting and presentation of speeches, classes, tutorials, seminars, symposiums, conferences and exhibitions; instruction and training services in the field of intellectual property; translation services, all relating to intellectual property; information and advisory services relating to the foregoing services.
Class 45: Legal services; the provision of legal services in the field of intellectual property; legal enquiry services; legal information research services; patent and trade mark agency services; patent and trade mark attorney services; establishment, maintenance and enforcement of intellectual property rights; intellectual property licensing and assignment services; legal, professional, advisory and consultancy services, all relating to intellectual property; services in connection with searching, research and investigation of intellectual property rights; arbitration, mediation, conciliation and alternative dispute resolution services; company formation and registration services; domain name registration, maintenance, enforcement, recovery and dispute services; preparation and provision of reports relating to all the aforesaid services; information and advisory services relating to the foregoing services.
Some of the contested goods and services are identical to the services on which the opposition is based. 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 and services were identical to those 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 goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the cost of the purchase.
C & P
C & R
Earlier trade mark
The relevant territory is Germany.
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 signs in dispute are both word marks, composed of two letters separated by an ampersand. Neither of the signs has any elements that could be considered clearly dominant or more distinctive than other elements.
Visually, the signs coincide in the first letter ‘C’ and in the second element ‘&’. However, they differ in their third and last letters, namely ‘P’ in the earlier mark and ‘R’ in the contested sign, although these letters might have a similar shape.
The length 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. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of the letter ‛C’ and in the ampersand. The pronunciation differs in the sound of the letter ‘P’ of the earlier sign, which is replaced in the contested sign by the letter ‘R’. Since these differing letters are aurally truly different, the signs are aurally similar to a low degree.
Conceptually, the element ‘&’, present identically in both marks, will be perceived by the relevant public as an ampersand, a character meaning ‘and’ (information extracted from Duden German Dictionary online on 11/07/2016 at http://www.duden.de/suchen/dudenonline/Et-Zeichen). However, it should be noted that the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. Therefore, the public in the relevant territory will perceive the signs as acronyms of two verbal elements joined by ‘and’, due to the presence of the ampersand separating the letters ‘C’ and ‘P’/‘R’. Therefore, the coinciding letter ‘C’ and the symbol ‘&’ may be perceived by the relevant public as referring to the same concepts, while the differing letters ‘P’ and ‘R’ will be perceived as indicating different elements. Therefore, the signs are conceptually similar only to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22). Furthermore, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the Opposition Division has assumed that the goods and services are identical and target the public at large and business customers, whose degree of attention may vary from average to high. The signs are similar to the extent that they coincide in the first letter ‘C’ and in the element ‘&’, present identically in both signs. However, they differ in their last letters, ‘P’ in the earlier sign and ‘R’ in the contested sign, which creates a considerable conceptual and aural difference.
The signs in dispute have three elements; both are, consequently, short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.
Although, it is a general principle that the first part of a sign is generally the part that catches the consumer’s attention, with regard to short signs the relevant public is likely to perceive the differences between them more clearly (03/12/2014, T‑272/13, M&Co., EU:T:2014:1020, § 47). Furthermore, with regard to short signs, the central elements are as important as the elements at the beginning and end of the signs (28/11/2013, T‑374/09, Ganeder, EU:T:2013:616, § 40). Therefore, considering that the average consumer normally perceives a sign as a whole and that each of the signs in question has only three characters, the beginnings of the signs cannot be of greater relevance in the present case.
In addition, the differing letter is not a phonetically similar letter. Consequently, the facts that the signs coincide in two elements and that the differing one is not phonetically similar does not lead to a finding of likelihood of confusion (23/10/2002, T‑388/00, ELS, EU:T:2002:260, by analogy). Moreover, the differing letter creates a conceptual difference between the signs in the consumers’ minds that could help them to distinguish the marks from each other.
Consequently, in spite of the similarities between the signs, the differing element is clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.
Considering all the above, even assuming that the goods and services are identical and bearing in mind the normal degree of distinctiveness of the earlier mark, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The other earlier right invoked by the opponent, namely German trade mark registration No 302 014 002 889 for the word mark ‘CP’, is less similar to the contested mark than the mark that has already been considered. The sign ‘CP’ has one element fewer than the contested sign, and does not have the character ‘&’ in common with the contested sign. Furthermore, the length and structure of this sign are consequently different from those of the other earlier mark. Since the Opposition Division has assumed that the goods and services are identical, the outcome cannot be different with respect to less similar signs.
NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
The right under the applicable law
According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a company name. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
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.