OPPOSITION No B 2 522 574
Wunderman, S.L., Avenida de Burgos, 21, 11ª, Complejo Triada Torre C 28036 Madrid, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)
a g a i n s t
WunderAgent UG, Helmerdingstr. 4, 10245 Berlin, Germany (applicant).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the 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 Spanish trade mark registrations No 2 980 290 and No 2 129 346.
The services on which the opposition is based are the following:
Spanish trade mark registration No 2 980 290 (earlier mark 1)
Class 9: Annunciators light panels for signalling, electronic equipment of audiovisual advertising, such as tv equipment, radio, speakers or otherwise, light tubes for advertising.
Class 16: Publications; books, magazines, newspapers, printed matter, materials for printing not included in other classes.
Class 35: Commercial information agency services, advertising; advertising space rental; diffusion of advertisements (brochures, leaflets, printed matter, samples); fixing posters; update services of advertising documentation; reproduction of documents and heliography; radiophonic advertising; mail advertising, televised advertising.
Class 36: Financial and monetary services and in connection with insurance contracts of all kinds.
Class 38: Services that allow a person to communicate with other person by any sensorial way. Diffusion services of radio or television programs. Telecommunication services.
Class 39: Special transportation of money, documents and values services. Distribution services of packages, rescue services.
Class 41: Assembly and production services of radio programs and television; studies of cinema and television; rental services of movies, video and film; as well as radio and tv equipment. Organisation services of music programs, competitions and festivals. Editing services of books, magazines and movies, film and video. Rental services of audio equipment, video tape and cinematographic, sound recordings and apparatus for radio and television. Information and consulting services related to the above mentioned.
Class 42: Services offered by people, individual or collectively, as members of an organisation that require a high degree of mental activity and regarding the theoretical and practical aspects in complex materials of human effort. Fotocomposition, translations, graphic design and photography services.
Spanish trade mark registration No 2 129 346 (earlier mark 2)
Class 36: Financial, monetary and real estate services; services in connection with insurance contracts of all kinds.
The contested services are the following:
Class 35: Advertising, marketing and promotional services; Personnel placement.
Class 36: Real estate services; Brokerage of building society savings agreements; Financial intermediary services; Financial brokerage services.
Class 42: IT services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 services in Class 35
The contested advertising is identically contained in both the contested sign and the opponent’s earlier mark 1.
The contested marketing services concern the organisation of the sale of a product, for example deciding on its price, the areas it should be supplied to and how it should be advertised. Therefore, the opponent’s advertising services of earlier mark 1 are included in the broader category of the contested marketing services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested promotional services are designed to launch or increase the sales of a product or service and are provided in the context of advertising services. Therefore, the contested promotional services are included in the broader category of the opponent’s advertising services of earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad categories of the opponent’s services, they are considered identical to the contested services.
The contested personnel placement is an aspect of personnel management and concerns the appropriate appointment of individuals into positions that are suitable for them in terms of job knowledge and performance. The opponent’s services offered by people, individual or collectively, as members of an organisation that require a high degree of mental activity and regarding the theoretical and practical aspects in complex materials of human effort in Class 42 of earlier mark 1 may concern, as it can be transpired from their context, services offered to organisations regarding the appropriate management of their workforce/allocation of staff according to the theoretical and practical requirements for the performance of their activities. Therefore, the contested services and the opponent’s services might target the same relevant public and might be produced or provided by the same undertakings. Therefore, they are similar to a low degree.
Contested services in Class 36
The contested real estate services are identically contained in both the contested sign and the opponent’s earlier mark 2.
The contested brokerage of building society savings agreements is a service rendered by financial institutions that provide banking and other financial services to their members and offer mortgages and demand-deposit accounts and are often backed by insurance companies. Therefore, the contested brokerage of building society savings agreements is included in the broader category of the opponent’s financial services of earlier mark 2. Since the Opposition Division cannot dissect ex officio the broad categories of the opponent’s services, they are considered identical to the contested services.
The contested financial intermediary services are offered by financial institutions such as banks, building societies, insurance companies, investment banks or pension funds, to meet the different needs of lenders and borrowers. Therefore, financial intermediary services are included in the broader category of the opponent’s financial services of earlier mark 2. Since the Opposition Division cannot dissect ex officio the broad categories of the opponent’s services, they are considered identical to the contested services.
Financial brokerage services are included in the broader category of the opponent’s financial services of earlier mark 2. Since the Opposition Division cannot dissect ex officio the broad categories of the opponent’s services, they are considered identical to the contested services.
Contested services in Class 42
The contested IT services concern the technology of the production, storage and communication of information using computers and microelectronics. To that extent, the contested services have the same purpose as the opponent’s telecommunication services in Class 38 of earlier mark 1, as they are both related to communications over a distance, generally by electronic means. They can have the same producer and distribution channels. Furthermore, they are complementary in the sense that telecommunications services cannot be rendered successfully without the technical support and planning of IT services. Therefore, the contested services are similar to the telecommunication services in Class 38 of earlier mark 1.
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 at issue are highly specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be high.
Earlier mark no 2 980 290
Earlier mark no 2 129 346
Earlier trade marks
The relevant territory is Spain.
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).
To analyse the elements forming the marks, it must first be recalled that some marks will be mentally dissected by consumers who encounter them. The extent to which this is the case will depend upon whether the consumer’s perception of the mark is of a single indivisible entity, or rather of independent elements within a compound sign, each having its own recognisable meaning.
Earlier mark 1 is a figurative mark consisting of the letters ‘WUNDERMAN’ in rather standard black upper case letters. The figurative element to the right of the verbal element depicts an arrow that points to the letters ‘WUNDERMAN’, which have no meaning for part of the relevant public. However, since the letters ‘MAN’ form a very basic English word, part of the relevant public might dissect earlier sign 1 into the word elements ‘WUNDER’ and ‘MAN’. Moreover, the figurative element, that is, the oversized arrow, even though it is considered the dominant element of the sign due to its size, will not be associated with any particular concept and will rather be perceived as redirecting the consumer’s attention to the verbal element. As a result, the earlier sign is composed of a banal and therefore less distinctive figurative element and a distinctive verbal element; even if part of the relevant public perceives it as containing the English word ‘MAN’, no meaning will be attributed to it in relation to the services that are identical or similar to a low degree.
Earlier mark 2 is a figurative mark consisting of the black letters ‘WCJ Wunderman Cato Johnson’ in a rather standard typeface, with the letters ‘WCJ’ being noticeably larger and more eye-catching than the other elements. Although ‘WCJ Wunderman Cato Johnson’ remains a meaningless sequence of letters for the relevant Spanish-speaking public, the positioning of the more dominant letters ‘WCJ’ above the letters ‘Wunderman Cato Johnson’, separated by a thick black line, is considered typical of signs consisting of the combination of an abbreviation and the words that it stands for. This will probably result in the consumers focusing more on the words ‘Wunderman Cato Johnson’ than on the abbreviation itself.
Furthermore, the letters ‘WUNDERMAN’ are the ones most likely to attract the relevant public’s attention, since they are positioned at the beginning of the sequence ‘Wunderman Cato Johnson’, which has no meaning for part of the relevant public. However, as already mentioned in the case of earlier sign 1, since the letters ‘MAN’ form a very basic English word, part of the relevant public might dissect the letters ‘WUNDERMAN’ of earlier sign 2 into the word elements ‘WUNDER’ and ‘MAN’, without attributing any meaning to the word ‘MAN’ in relation to the services concerned. Therefore, the contested mark has no elements that could be considered clearly more distinctive than other elements.
The contested sign is a word mark consisting of the letters ‘WunderAgent’, which do not have any meaning for part of the public in the relevant territory. Furthermore, since the letters ‘Agent’ form a basic English word that is equivalent to the Spanish word ‘Agente’, part of the relevant public might dissect the contested sign into the word elements ‘Wunder’ and ‘Agent’. However, even after the contested mark is dissected, the words ‘Wunder’ and ‘Agent’ will not be considered descriptive or lacking distinctiveness for any of the relevant services. Moreover, in the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
Visually, the signs coincide in the sequence of letters ‘Wunder*’. The signs are different in their remaining word and figurative elements.
In particular, in earlier mark 1 and the contested mark, the letters ‘Wunder*’ are identical and appear in the same order in both signs.
As regards the identical letters composing the beginning of both marks, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
However, the signs differ in the additional last letters, ‘MAN’ of earlier sign 1 and ‘Agent’ of the contested sign, as well as in the slight stylisation of the coinciding letters in earlier mark 1. The contested mark is a word mark and earlier mark 1 is a figurative mark in a slightly stylised typeface. The oversized and eye-catching figurative device of the earlier mark will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.
According to established case law, 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; 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).
Therefore, the signs are visually similar to an average degree.
As regards the visual comparison of earlier mark 2 with the contested mark, as pointed out above, the relevant public will probably focus on the words that are abbreviated as ‘WCJ’, rather on the abbreviation itself. Taking the above into account, the letters ‘Wunder*’ are in the same order in both signs. These elements are identical and are positioned at the beginning of the second line of earlier mark 2 and at the beginning of the contested sign. In addition, the typeface and the colours of the word elements ‘WCJ *man Cato Johnson’ in the figurative mark are not stylised enough to distract consumers’ attention from the word elements that it has in common with the contested sign.
However, the signs differ in the additional letters ‘Agent’ of the contested sign and the letters ‘WCJ *man Cato Johnson’ of earlier mark 2 as well as in their depiction. The contested mark is a word mark and earlier mark 2 is a figurative mark in a standard bold typeface without any additional distinctive and fanciful figurative element. The black thick line, separating the word elements into the abbreviation and its meaning, will be perceived only as such, that is, as a boundary, rather than as a figurative element.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of all three signs coincides in the sound of the letters ‛WUN-DER’, present identically in all of them.
However, the pronunciation differs (a) in the sound of the letters ‘A-GENT’ of the contested mark, which have no counterparts in the earlier signs, and (b) in the sound of the letters ‘MAN’ of earlier sign 1 and ‘W-C-J-MAN-CA-TO-JOHN-SON’ of earlier sign 2, which have no counterparts in the contested mark.
Therefore, as regards the phonetic comparison of the contested mark with earlier mark 1, it has to be stressed that they have the same two syllables at the beginning and are similar to an average degree.
As regards the phonetic comparison between the contested mark and earlier mark 2, the coinciding syllables ‛WUN-DER’ are only two out of the 10 syllables of earlier mark 2. In addition, the coinciding syllables are differently positioned within the marks: at the beginning of the contested mark and after the first three letters of earlier mark 2. Considering the above, it is concluded that the contested sign and earlier mark 2 are similar to a low degree.
Conceptually, neither of the signs has a meaning as a whole for the Spanish public.
However, as already mentioned above, part of the relevant public might dissect the earlier signs 1 and 2 into the word elements ‘WUNDER’ and ‘MAN’, since the letters ‘MAN’ form a very basic English word and refer to an adult male human being. The same applies to the contested sign, as part of the public might dissect it into the word elements ‘Wunder’ and ‘Agent’, since the letters ‘Agent’ form a basic English word that is similar to the Spanish equivalent ‘Agente’, which refers to a person who acts on behalf of another person, group, business, government, etc.; a representative.
Even if for part of the public ‘MAN’ and ‘Agent’ might be perceived as words with those dictionary definitions, these two words are not conceptually similar and no meaning could be attributed to them in relation to the goods/services concerned.
For the remaining members of the relevant public, none of the elements of the signs has a meaning.
Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 marks
The distinctiveness of the earlier marks 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 the earlier marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
Global assessment, other arguments and conclusion
According to established case law, the 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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).
As already pointed out, the services under comparison are partly identical and partly similar (to varying degrees). The signs are similar on account of the letters ‘WUNDER’, which they have in common. The contested sign and earlier mark 1 differ in their additional last letters, ‘MAN’ in the earlier sign and ‘Agent’ in the contested sign, as well as in the figurative depiction of an arrow that points to the verbal element in the earlier mark 1. As regards the Figurative earlier mark 2, it differs from the contested sign because it contains the letters ‘WCJ *man Cato Johnson’, as well as the letters ‘WUNDER’.
The letters ‘WUNDER*’, which the signs have in common, are in the same order in both the contested sign and earlier mark 1. The additional letters and the figurative element in the earlier mark are not sufficient to distinguish the marks clearly and divert the attention of the public from the common verbal element ‘WUNDER*’.
As regards the comparison between the contested mark and earlier mark 2, the similarity between the signs is limited to the correspondence in the letters ‘WUNDER*’, reproduced in a slightly stylised font in the earlier mark. This coinciding element is positioned at the beginning of the contested mark and at the beginning of the expression in the earlier mark that will attract the attention of the public, as already mentioned.
Despite the low degree of similarity between the contested sign and earlier mark 2, a likelihood of confusion still exists, according to the principle of interdependence between the relevant factors. The services of the earlier mark 2, which were comparable to those of the contested mark, were found to be identical. Therefore, when evaluating all the relevant factors, the identity between the services counterbalances the lesser degree of similarity between the marks.
Therefore, despite the high degree of attention that the relevant public may display when purchasing the services at issue, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 2 980 290 and No 2 129 346.
It follows from the above that the contested trade mark must be rejected for all the services applied for, since some of them are identical to those of earlier trade mark 2 and some of them are identical and similar to varying degrees to those of earlier trade mark 1.
The opponent has also based its opposition on the following earlier trade marks:
Spanish trade mark registration No 1 800 546 for the word mark ‘WUNDERMAN CATO JOHNSON, S.A.’, Spanish trade mark registration No 1 800 547 for the word mark ‘WUNDERMAN CATO JOHNSON, S.A.’, Spanish trade mark registration No 2 405 019 for the figurative mark and Spanish trade mark registration No 2 129 349 for the figurative mark .
As earlier Spanish trade mark registrations No 2 405 019 and No 2 129 349 lead 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).
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
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.