OPPOSITION No B 2 675 315

Leo Burnett Company, Inc., 35 W. Wacker Drive, Chicago, Illinois 60601, United States of America (opponent), represented by Baker & Mckenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative)

a g a i n s t

DotC United Inc, Trinity Chambers, PO Box 4301, Road Town, Tortola, British Virgin Islands (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 675 315 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 967 401. The opposition is based on, inter alia, European Union trade mark registration No 8 713 596. The opponent invoked Articles 8(1) (b) 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 8 713 596.

1. The goods and services

The services on which the opposition is based are the following:

Class 35: Advertising agency services, business marketing and consulting services, advertising services, namely, creating corporate and brand identity for others, preparing merchandise packaging for others, promotion services.

The contested goods and services are the following:

Class 9: Computer programs [downloadable software]; Computer game software; Computer software applications, downloadable; Video game cartridges; Monitors [computer programs]; Downloadable music files.

Class 35: On-line advertising on a computer network; Marketing; Systemization of information into computer databases; Search engine optimization; Search engine optimisation; Web site traffic optimization; Web site traffic optimisation; Updating and maintenance of data in computer databases.

Class 42: Computer programming; Computer software design; Updating of computer software; Computer system design; Providing search engines for the internet; Providing information on computer technology and programming via a web site.

An interpretation of the wording of the list of the opponent´s services is required to determine the scope of protection of these services.

The term ‘namely’, used in the opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services, that is, advertising 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 goods in Class 9

The contested computer programs [downloadable software]; computer game software; monitors [computer programs] are programs, routines and symbolic languages that control the functioning of the hardware and direct its operation.

On the other hand, computer software applications, downloadable of the applicant are computer software designed to help the user perform various tasks on a computer. Application software differs from system software in that it can be accessed by the user and run on a computer. Application software is usually designed with the user in mind. Downloadable music files are those that include music which is saved and could be played in a computer, phone or MP3. Video game cartridges are those containers for video games designed for insertion into a mechanism.

The opponent´s advertising agency services; business marketing; advertising services, namely, creating corporate and brand identity for others, preparing merchandise packaging for others, promotion services consist 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, which 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.

Consulting 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.

Therefore, the contested goods computer programs [downloadable software]; Computer game software; Computer software applications, downloadable; Video game cartridges; Monitors [computer programs]; downloadable music files are dissimilar to the earlier services included in Class 35 since they have a different nature and purpose, they are not distributed through the same channels and they are not addressed at the same relevant public. Moreover, these goods and services are not in competition and they are not manufactured and/or provided by the same undertakings.

Contested services in Class 35

The contested marketing is a broader category which includes the opponent´s business marketing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are identical to the earlier services.

The contested on-line advertising on a computer network is included in or overlaps with the opponent´s advertising agency services. Therefore, the services are identical.

The contested services search engine optimization (listed twice); web site traffic optimization (listed twice) are those which consist of the process of maximizing the number of visitors to a particular website by ensuring that the site appears high on the list of results returned by a search engine. They are included in the broader category of the earlier services business marketing included in Class 35. Therefore, they are identical.

The remaining contested services systemization of information into computer databases; Updating and maintenance of data in computer databases are all types of data management, directed at businesses that need support in managing their computerized information. They are dissimilar to the earlier services included in Class 35 since they have a different nature and purpose, they are not distributed through the same channels and they are not addressed at the same relevant public. Moreover, these goods and services are not in competition and they are not manufactured y/o provided by the same undertakings.

Contested services in Class 42

The contested computer programming; Computer software design; Updating of computer software; Computer system design; Providing search engines for the internet; Providing information on computer technology and programming via a web site are all those services related to the process of writing source codes, designing and updating programs, routines, and symbolic languages, providing the engines for searching in Internet and giving information on that issued.

These services dissimilar to the earlier services included in Class 35 since they have a different nature and purpose, they are not distributed through the same channels and they are not addressed at the same relevant public. Moreover, these goods and services are not in competition and they are not manufactured and/or provided by the same undertakings.

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 and at business customers with specific professional knowledge or expertise.

The degree of attentiveness is deemed to vary from average to enhanced depending on the nature, price and sophistication of the services.

3. The signs

LEO BURNETT GROUP	LEOMASTER
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).

Both marks are word signs. The earlier mark consists of the elements ‘LEO’, ‘BURNETT’ and ‘GROUP’ whereas the contested sign is formed by the element ‘LEOMASTER’.

A part of the relevant public will perceive the contested sign as one single word with no clear and direct meaning. However, it cannot be denied that another part of the public will split the contested sign into ‘LEO’ and ‘MASTER’. For those consumers, ‘LEO’ will be understood as the common given name which is the nickname form of ‘LEONARD’. On the other hand, ‘MASTER’ will be perceived, together with ‘LEO’, as a surname. Be as it may be, these elements do not have any relation to the relevant services, therefore, they have an average degree of distinctive character. In the present case, the contested sign has no elements that could be considered clearly more distinctive than other elements.

The opponent claimed that the element ‘MASTER’ included in the contested sign, which means principal, great, prime, is of low distinctive character as it has a mere laudatory character. However, it is very unlikely that the part of the public that understands the meaning of ‘MASTER’, either when perceiving the contested sign as one single word or together with the common given name ‘LEO’ will perceive it as a laudatory element. The Opposition Division considers that the opponent´s claim is unfounded and has to be dismissed.

On the other hand, a part of the relevant public will perceive the elements ‘LEO BURNETT’ of the earlier mark as a name and a surname whereas for another part of the public these two elements convey no meaning. In any event, since they have no relation to the relevant services, they have an average degree of distinctive character.

However, the element ‘GROUP’ of the earlier mark will be understood as, among others, ‘a commercial organisation consisting of several companies under common ownership’ by the majority of the relevant public as it is an English word widely used internationally and close variations thereof exist in the majority of the European languages (‘groupe’ in French, ‘grupo’ in Spanish or ‘Gruppe’ in German). Bearing in mind the relevant services, this element is descriptive and non-distinctive for these services since they describe that the services are provided by an organisation which belongs to the same ownership as other companies.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs merely coincide in the letters ‘LEO’ which forms an independent element in the earlier mark and the initial part of the contested sign. However, they differ in the distinctive elements ‘BURNETT’ and ‘MASTER’ included in both marks respectively and in the term ‘GROUP’ which is descriptive and non-distinctive as seen above.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs merely coincides in the sound of the letters /leo/. The pronunciation differs in the sound of the letters /burnet(t)/ of the earlier mark and /master/ of the contested sign and in /group/ included in the earlier mark which forms a descriptive and non-distinctive element as explained above.

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

Conceptually, as stated above, a part of the public will perceive the meaning of the descriptive word ‘GROUP’ whereas it will not attribute any meaning to the contested sign. Since one of the signs lacks any meaning, the signs are not conceptually similar for that part of the public. However, this conceptual difference is of little relevance for the overall assessment of likelihood of confusion as the term ‘GROUP’ lacks distinctiveness.

Another part of the public will perceive the element ‘LEO’ included in both the earlier and the contested sign as the common given name which is the nickname form of ‘LEONARD’. This part of the public will see ‘BURNETT’ and ‘MASTER’ together with ‘LEO’ as two different surnames.

Since both signs will be associated with a similar meaning due to the presence of the common element ‘LEO’ but with different surnames, the signs are conceptually similar to a low degree to that part of the public.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a descriptive and non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are in part identical and in part dissimilar.

The Court has set out the essential principle that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in recital 8 in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

In the present case, when two conflicting signs contain the same first name but are followed by clearly different surnames, there is no likelihood of confusion. Some consumers will realise that they distinguish goods/services of different, unconnected undertakings and they will be aware that there are many people with that name, in this case, the nickname ‘LEO’.

In the Opposition Division’s view, the average European consumer, even if it does not perceive the element ‘LEO’ as the common first name and ‘MASTER’ and ‘BURNETT’ as two different surnames, would not make the link between the signs. Therefore, it is considered that the differences between the signs are enough to counteract the similarities between them. The fact that they share the letters ‘LEO’ does not render the signs similar enough to lead the public to confuse the marks.

Considering all the above, even if some of the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade marks:

• European trade mark registration No 1 114 925 for the figurative mark protected for advertising agency services, namely media buying services and event marketing and promotion services in Class 35.

• European trade mark registration No 5 479 985 for the figurative mark protected for advertising agency services in all media in Class 35.

The other earlier rights invoked by the opponent are less similar to the contested mark. As regards earlier mark No 1 114 925, it contains further figurative elements such as the stylisation of the characters which is not present in the contested trade mark and covers a narrower scope of the services. Earlier mark No 5 479 985 also contains further figurative elements such as the representation of a pencil bearing the elements ‘LEO BURNETT’ in highly stylised white characters which is not present in the contested trade mark and covers a narrower scope of the services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

Since the opposition is not successful under Article 8(1)(b) EUTMR, the examination will continue in relation to the remaining ground, namely, Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed that its earlier trade marks No 1 114 925, No 5 479 985 and No 8 713 596 are reputed in the European Union for the services for which they are registered.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 03/05/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 08/09/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

Conclusion

The opposition is totally rejected.

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 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

Michaela SIMANDLOVA

Carmen SANCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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.