OPPOSITION No B 2 586 306

ImPuls AG, Dießemer Str. 163, 47799 Krefeld, Germany (opponent), represented by Patentanwälte Dr. Stark & Partner mbB, Moerser Str. 140, 47803 Krefeld, Germany (professional representative)

a g a i n s t

Demos S.A., 1, La Grande Arche Paroi Nord, 92800 Puteaux, France (applicant), represented by Pascal Goyard, 10 bis, avenue de la Grande Armée, 75017 Paris, France (professional representative).

On 22/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 586 306 is partly upheld, namely for the following contested goods and services in Classes 9, 35, 38, 41 and 42:

Class 9 (in its entirety): Data processing equipment and computers; software, with programs provided data mediums.

Class 35: Business consultancy, information and enquiries; Organizational consultancy in the area (fields) of data processing.

Class 38: Telecommunications; communications by computer terminals.

Class 41: Arranging of competitions for education; arranging and conducting of colloquiums, conferences, congresses; organization of exhibitions for educational purposes; Education; providing of training; library services; publication of books; publication of electronic books and journals on-line; electronic desktop publishing.

Class 42: Design and development of computer hardware and software; research and development for others; computer software design; computer programming; creating and maintaining web sites for others; consultancy in the field of computers; conversion of computer data and programs (except physical conversion), conversion of documents from a physical medium to an electronic medium; hosting computer sites [web sited].

2. European Union trade mark application No 14 190 607 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.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 190 607 (word mark: “LEARN IMPULSE”), namely against all the goods and services in Classes 9, 35, 38, 41 and 42. The opposition is based on international trade mark registration No 1 017 124 (figurative mark: “ ”) designating the European Union. The opponent invoked Article 8(1)(b) 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.

1. The goods and services

The goods and services in Classes 9, 35, 41 and 42 on which the opposition is based are the following:

Class 9: Data processing equipment and computers; software, with programs provided data mediums.

Class 35: Organizational consultancy in the area (fields) of data processing.

Class 41: Education and providing of training with regard to electronic data processing including software and hardware.

Class 42: Design and development of computers and computer programs; renting of data processing equipment.

The contested goods and services in Classes 9, 35, 38, 41 and 42 are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs.

Class 35: Advertising; business management; business administration, office function; distribution of prospectuses and samples; arranging newspaper subscriptions for others; business consultancy, information and enquiries; accounting; document reproduction; employment agencies; computerised file management; exhibitions for commercial or advertising purposes.

Class 38: Telecommunications; press and information agencies; communications by computer terminals.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; publication of books; library services; film production services; rental of sound recordings; videotape editing; arranging of competitions for education or entertainment; arranging and conducting of colloquiums, conferences, congresses; organization of exhibitions for cultural or educational purposes; booking of seats for shows; game services provided on-line from a computer network; publication of electronic books and journals on-line; electronic desktop publishing.

Class 42: Design and development of computer hardware and software; research and development for others; project studies (technical -); computer software design; computer programming; creating and maintaining web sites for others; consultancy in the field of computers; conversion of computer data and programs (except physical conversion), conversion of documents from a physical medium to an electronic medium; hosting computer sites [web sited]; packaging design.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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

The contested apparatus for recording, transmission or reproduction of sound or images are included in the broad category of the opponent’s data processing equipment and computers. Therefore, they are identical.

Computers are highly similar to the contested magnetic data carriers, recording discs as they usually coincide in producers, relevant public and distribution channels. Furthermore they are complementary.

Contested services in Class 35

The contested business consultancy, information and enquiries overlap with the opponent’s organizational consultancy in the area (fields) of data processing. Therefore, they are identical.

Organizational consultancy in the area (fields) of data processing is lowly similar to the contested business management; business administration as they have the same purpose. They usually coincide in producers and relevant public.

The remaining contested advertising; office function; distribution of prospectuses and samples; arranging newspaper subscriptions for others; accounting; document reproduction; employment agencies; computerised file management; exhibitions for commercial or advertising purposes have a different nature and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 38

Computers in Class 9 are similar to the contested telecommunications; communications by computer terminals as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The remaining contested press and information agencies have a different nature and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 41

The contested arranging of competitions for education; arranging and conducting of colloquiums, conferences, congresses; organization of exhibitions for educational purposes overlap with the opponent’s Education and providing of training with regard to electronic data processing including software and hardware. Therefore, they are identical.

The contested education; providing of training include, as broader categories, the opponent’s education and providing of training with regard to electronic data processing including software and hardware. 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 library services are similar to education and with regard to electronic data processing including software and hardware as they have the same purpose. They usually coincide in producers, relevant public and distribution channels.

The contested publication of books; publication of electronic books and journals on-line; electronic desktop publishing are lowly similar to education and with regard to electronic data processing including software and hardware as they usually coincide in distribution channels. Furthermore they are complementary.

The remaining contested entertainment; sporting and cultural activities; film production services; rental of sound recordings; videotape editing; arranging of competitions for entertainment; organization of exhibitions for cultural purposes; booking of seats for shows; game services provided on-line from a computer network have a different nature and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 42

The contested design and development of computer hardware and software overlap with the opponent’s design and development of computers and computer programs. Therefore, they are identical.

The contested research and development for others include, as broader categories, or overlap with, the opponent’s development of computers and computer programs. 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 computer software design; computer programming overlap with the opponent’s development of computer programs. Therefore, they are identical.

The contested creating and maintaining web sites for others; hosting computer sites [web sited]; conversion of computer data and programs (except physical conversion), conversion of documents from a physical medium to an electronic medium are similar to development of computer programs as they usually coincide in producers, relevant public and distribution channels.

The contested consultancy in the field of computers is similar to development of computers as they usually coincide in producer, relevant public and distribution channels.

The remaining contested project studies (technical -); packaging design have a different nature and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same or economically linked undertakings. 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 different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary between average and high, given that part of the goods and services are complex and expensive and will therefore be selected carefully before purchasing.

3. The signs

	LEARN IMPULSE
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements “ImPuls/IMPULSE” in both signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in the United Kingdom.

The earlier trade mark will be recognized by the relevant public as a misspelling of the nearly identical word “IMPULSE” in the contested sign with the meaning of “a driving or motivating force; an impetus“ (Oxford Dictionary). Since it has no connotation in relation to the relevant goods and services, it is, therefore, distinctive.

The earlier trade mark will be recognized by the relevant public as a misspelling of the nearly identical word “IMPULSE” in the contested sign with the meaning “a driving or motivating force; an impetus“ (Oxford Dictionary). Since it has no meaning for the relevant goods and services, it is, therefore, distinctive.

The element “LEARN” of the contested sign will be associated with “gain or acquire knowledge of or skill in (something) by study, experience, or being taught” (Oxford Dictionary). Bearing in mind that the relevant goods and services are “education-related”, this element is non-distinctive for part of these goods and services, such as magnetic data carriers, recording discs in Class 9 and Education; providing of training in Class 41 as their subject matter.

The figurative elements of the earlier trade mark are very basic decorative elements and are, therefore, non-distinctive.

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).

Visually and aurally, the earlier trade mark is nearly completely included as the second element of the contested sign, even though depicted slightly differently and with the additional letter “E”. The signs differ as regards the additional first element of the contested sign, namely the word “LEARN”, which is non-distinctive for part of the goods and services. Therefore, the signs are visually and aurally similar to an average degree. The degree of similarity is higher, when this additional element is non-distinctive for some of the goods and services.

Conceptually, the contested sign in its entirety has no clear meaning for the goods and services. The signs have the same meaning as regards the distinctive words “ImPuls/IMPULSE”. They differ in the meaning of the additional word of the contested sign “LEARN”. Therefore, the signs are conceptually similar to an average degree. The degree of similarity is higher, when this additional element is non-distinctive for some of the goods and services.

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.

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 goods and 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually, aurally and conceptually similar to, at least, an average degree.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual, aural and conceptual similarities, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods and services, there is, even taking into account a high degree of attention for a part of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so, when the degree of attention of the public is only average and also for the goods, which are only similar to a low degree because of the relevant visual, aural and conceptual similarities between the signs.

The applicant did not submit any observations. Therefore, its arguments cannot be examined.

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 partly well founded under Article 8(1)(b) EUTMR.

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

Tobias KLEE

Peter QUAY

Martin EBERL

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.