OPPOSITION No B 2 788 308

Universidad de Córdoba, Medina Azahara, 5, 14071 Córdoba, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Université catholique de l'Ouest - UCO Association St Yves, 3 Place André Leroy, 49000, Angers, France (applicant), represented by Sylvie Degez, 5bis Boulevard du Maréchal Foch, 49100, Angers, France (professional representative).

On 17/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 788 308 is partially upheld, namely for the following contested services:

Class 41: Education; Providing of training; Coaching, providing of training and teaching, in particular for vocational purposes; Coaching, providing of training and distance learning (including via electronic or digital networks), in particular for vocational purposes; Educational examination; Teaching, training and coaching information; Academies education; Organisation of competitions for teaching purposes; Vocational guidance (education or training advice); Correspondence courses; Arranging and conducting of training workshops, colloquiums, conferences, congresses, seminars and symposiums; Organization of exhibitions for cultural or educational purposes; Education information; Education and providing of training; Organization of competitions education or entertainment; Lending of books, magazines, manuals, mobile library services; cultural activities; information relating to cultural activities and shows; sporting activities; organisation of sports competitions; operating sports centres or sports installations, sport camp services, sport instruction, gymnastic instruction, rental of stadium facilities, of sports equipment, except vehicles.

Class 42: Research and development (for others); Engineering evaluations and appraisals in the fields of science and technology; Scientific and technical research; Expert reports (engineering), research relating to environmental protection, geological surveys; Weather forecasting and Technical project studies.

2. European Union trade mark application No 15 455 521 is rejected for all the above services. It may proceed for the remaining 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 455 521 for the figurative mark , namely against all the services in Classes 35, 38, 41 and 42. The opposition is based on, European Union trade mark registration No 5 000 633 for the word mark ‘UCO’ and Spanish trade mark registration No 2 970 748 for the word mark ‘uco’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 5 000 633 for the word mark ‘UCO’ and Spanish trade mark registration No 2 970 748 for the word mark ‘uco’.

The date of filing of the contested application is 19/05/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based were put to genuine use in the European Union from 19/05/2011 to 18/05/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 5 000 633, earlier mark (1):

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; CD-ROMs; downloadable electronic publications; magnetic cards; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter, leaflets, catalogues, magazines, books and printed publications; printed matter; bookbinding material; maps, posters, transfers, cards, photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 38: Telecommunications services; communications by worldwide computer networks.

Class 41: Educational services; providing of training; entertainment; arranging of sporting and cultural activities; arranging of trade fairs and exhibitions for cultural or educational purposes; production of audiovisual recordings; publication of books and texts, other than publicity texts; provision of on-line electronic publications (not downloadable); arranging and conducting of competitions, colloquiums, conferences and congresses; providing museum facilities (presentation, exhibitions); production and presentation of live performances.

Class 42: Services provided by engineers dealing with appraisals, valuations, research and surveys in the fields of science, technology and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Spanish trade mark registration No 2 970 748, earlier mark (2):

Class 35: Registration, transcription, composition, compilation or systematisation of written communications and registrations, and also the compilation of mathematical or statistical data; Commercial or industrial business management assistance; Business management; Business administration; Office functions; Advertising; Import-export; Services of commercial representations; Opinion polling; Organisation of trade fairs and exhibitions for commercial or advertising purposes.

Class 38: Telecommunications services; communications by worldwide computer networks.

Class 41: Educational services; providing of training; entertainment; arranging of sporting and cultural activities; arranging of trade fairs and exhibitions for cultural or educational purposes; production of audiovisual recordings; publication of books and texts, other than publicity texts; provision of on-line electronic publications (not downloadable); arranging and conducting of competitions, colloquiums, conferences and congresses; providing museum facilities (presentation, exhibitions); production and presentation of live performances.

Class 42: Services provided by engineers dealing with appraisals, valuations, research and surveys in the fields of science, technology and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 18/03/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 23/05/2019 to submit evidence of use of the earlier trade marks. Said time limit was extended to 23/07/2019. On 15/07/2019, within the time limit, the opponent submitted evidence of use.

The opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. In this regard, it is recalled that where a claim for confidentiality has been submitted by the party by use of a standard ‘confidential’ stamp on the cover page of the submission, or of a general statement that the document ‘contains confidential information’ or by ticking the ‘confidential’ tick-box when using the electronic communication platform, yet the documents enclosed contain no explanation or indication of any special interest, nor any attempt on behalf of the party to justify the confidential nature or status of the submission (as in the present case), the Office will remove this indication. This applies to all submissions where the party claims confidentiality ‘by default’ yet provides no justification in support of its claim. The party can at any time before the receipt of a request for inspection of files, invoke and sufficiently justify a special interest in keeping the document confidential. Based on the above, the Opposition Division will remove the indication that the documents are confidential and proceed with the analysis of the evidence accordingly.

The evidence to be taken into account is the following:

Advertising material

Doc 1 – 7: Different advertisements related to educational and training services offered by the Universidad de Córdoba. Most of the documents presented are posters or brochures advertising the number of students doing internships and different academic years of masters, bachelors and PhDs, in which the sign ‘UCO’ is used. There is also a screenshot taken on 19/07/2011 in which a banner with an advertisement using the sign ‘UCO’ can be seen.

Advertising invoices

Doc 8 – 10: Six invoices from the company ‘Publicidad Boix S.L.’ to the Universidad de Córdoba for publicity campaigns, both on the street and in social media, in which the sign of ‘UCO’ is used. Most of these invoices are dated during the relevant period.

Press publications and press references

Doc 11 – 25: Press publications from different Spanish newspapers (ABC Córdoba, Diario de Córdoba, El Día, El Día de Córdoba and UCO Universitas) dated during the relevant period. These articles deal with different topics related to the Universidad de Córdoba. Some of these concern that the Universidad de Córdoba ranked in the 395^th position in the Leiden Ranking 2014, an award given to the Universidad de Córdoba for a study on gender violence, the presentation of the scientific achievements of the Universidad de Córdoba in an international seminar and many others, such as creation of a language school, elections of new rector, a virtual job fair, the double masters, science week, scientific successes, and in all of them the sign ‘UCO’ as an abbreviation for ‘Universidad de Córdoba’ is used.

Banners

Doc 26 – 56: Thirty copies of advertisement banners from internet referring to ‘UCO’, advertising all kind of services and events related to the Universidad de Córdoba, such as, scholarships and inscriptions for different academic years, competitions, language courses, volunteer activities, tuition fees, academic loans, summer programs, international mobility grants, sport activities, the official university bulletin, university elections, apps for commuting to university etc.

Moreover, an agreement of 15/10/2018 between the Universidad de Córdoba and the company ‘Publicidad Boix S.L.’ for the provision of advertising and communication services for promoting the Universidad de Córdoba.

UCO Bulletin

Doc 57 – 61: Universidad de Córdoba’s publications from the UCO’s bulletin. These are agreements between the Universidad de Córdoba and third cultural or educational parties, and different resolutions of the Universidad de Córdoba calling for a public competition to fill the position of professor. These evidences are dated within the relevant period and the ‘UCO’ sign is used in them.

Preliminary remarks

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, press releases, advertisements, agreements, and their self-explanatory character (to a sufficient extent), the Opposition Division considers that there is no need to request a translation. Moreover, in relation to the newspaper articles, the opponent marked the relevant parts and submitted translation or explanation in its observations or in the evidence itself, for example, in case of all the press publications, the titles have been translated in them.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered. The applicant argues that part of the evidence is not dated and comes from the opponent itself, rather than from an independent source. Furthermore, the applicant argues that some of the items shown in the materials bear the mark of public domain in the trade mark and that therefore the opponent’s trade mark is null.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of evidence – factors of use

The evidence, and particularly press publications, which reach the entire Spanish territory, advertising invoices and advertisements show that the place of use is Spain. Even though a lot of the evidence submitted do not refer to the place of use, this can be inferred from the location of the Universidad de Córdoba in Córdoba, Spain and the language of the majority of the documents provided (Spanish). Therefore, the evidence relates to the relevant territory.

As far as the time of use is concerned, according to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T-191/07, Budweiser, EU:T:2009:83, § 108).

In the present case, the Opposition Division points out that some documents, in particular, most of the posters, brochures and banners are not dated. However, the time of use for this evidence can be inferred from the academic years announced in the aforesaid documents. In any case, all other evidence provided such as agreements with third parties, advertising invoices and press publications, are dated within the relevant period. Therefore, it is clearly demonstrated that the evidence relates to the relevant period and that use of the earlier mark in the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be considered, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The applicant argues that the evidence does not show the use as trade marks in the course of trade and that there is no evidence of sales of the relevant goods and services. In that regard, the Opposition Division must draw the attention to the public nature of the Universidad de Córdoba and consider that the trade marks are protected for a non-profit company. Consequently, where the mark is protected for goods or services of not-for-profit enterprises, and the mark has been used, the fact that there is no profit motive behind the use is irrelevant: ‘The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services’ (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 17). This clearly also applies to academic institutions in the public sector.

Therefore, as a non-profit company/organisation, the services offered are normally for free as only a small administration fee has to be paid. Goods and services offered free of charge may constitute genuine use when they are offered commercially, that is to say with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to the goods or services of other undertakings, and therefore of competing with them (09/09/2011, T-289/09, Omnicare Clinical Research, EU:T:2011:452, § 67-68).

The proof filed, in particular all the press articles, the investment in advertising and all kind of publicity (posters, banners and brochures) with the ‘UCO’ sign on it, provide the Opposition Division with limited, yet sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence contains certain indications, although circumstantial, regarding the quantitative aspects of use, such as the big amount of money invested in publicity campaigns. Furthermore, the evidence gives relevant indications regarding the qualitative aspects of use, such as all the press publications making use of the mark. There is no room for doubt that the opponent’s marks were used with a commercial goal to denote educational services provided at a substantial degree of frequency and duration.

In its observations, the applicant also argues that in some documents the word ‘UCO’ is not used as a mark but as a company name which goes beyond product identification or use as a trade mark.

However, the use of a sign may serve several purposes at the same time, The use of a business or company name may be regarded as use in relation to ‘services and goods’, provided that a link is established between, for example, a link between the sign which forms the business name, the trade name or the company sign and the goods and services (11/09/2007, C-17/06, Céline, EU: T: 2007: 497, § 21-23). Insofar as these conditions are satisfied, the use of a word element, being a trade name of the company, does not rule out its use as a trade mark for designating goods or services (30/11/2009, T-353/07, Coloris, EU: T: 2009: 475, § 38).

The documents submitted show immediately that the earlier trade marks were used to designate some services. It is obvious, for example, that the advertising, press articles and the agreements with third parties were related to university education services.

Therefore, and having regard to the evidence in its entirety, the Opposition Division is of the opinion that the documents provided by the opponent offer sufficient information about a connection between the earlier trade marks and some of the services for which the earlier marks are registered. Furthermore, the documents submitted contain sufficient information about the size of the territory, and the duration and frequency of use of the earlier trade marks.

However, the evidence submitted by the opponent does not show genuine use of the earlier trade marks in connection with all the goods and services on which the opposition is based.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and 46).

In the present case, the evidence proves use of the marks in relation to university educational services. This activity can be considered to form an objective subcategory of the opponent’s educational services in Class 41. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks only for university educational services in Class 41. No evidence has been filed in relation to the remaining registered goods and services.

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 5 000 633 for the word mark ‘UCO’.

1. The services

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

Class 41: University educational services.

The contested services are the following:

Class 35: Arranging subscriptions to databases, database servers, servers providing access to a computer or data transmission network; Arranging newspaper subscriptions for others; Arranging subscriptions to periodical publications, published on media of all kinds, in particular electronic media; Business administration of goods and services licences for others; Business management and organization consultancy; Document reproduction; Procurement for others (purchasing goods and services for other businesses) in the field of university education; Economic forecasting; Cost price analysis; Marketing studies; Employment agencies; Personnel management consulting; Personnel recruitment; Selection of personnel by means of psychological testing; Computer services of all kinds, namely: management of files and databases, data entry and processing, word processing, statistical work, qualitative and quantitative studies, computer-aided data analysis, compilation and organisation of data into a master file, computerised file management; Data search in computer files for others; Research for sponsorship; Newsclipping services; Exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Subscriptions to a centre providing access to a computer network or data transmission service via a world-wide communications network (such as the internet) or private or restricted access communication networks (such as an intranet).

Class 38: Teleconferencing and videoconferencing services; Providing Internet chat rooms; Electronic mail; Sending of SMS messages; Computer portals, namely transmission of information via websites providing access to information, in particular via search engines (computer programs); News agencies; Radio or television broadcasting; Broadcasting of programmes including for educational purposes, in particular by radio, television, audio and video tape, optical and/or digital disc, cable, terrestrial, satellite, optical fibre; Communication of data (in particular in the form of messages or images) by data processing and/or by computer terminals, on local (private or restricted access (intranet)), national or international (internet or extranet) networks, secure or not secure; Communications by radio, telegraph and telephone; Electronic or telematic mail and electronic or telematic data exchanges; Transmission and broadcasting of texts, data, sound, images and moving images; Transmission of information accessible by access code to servers or websites; Transmission of information accessible by access code to data processing sites; Transmission of information accessible via computerised or data transmission databases and computer database servers; Telecommunications; Information about telecommunication; Communications by cellular phones; Providing user access to a global computer network (service providers); Providing telecommunications connections to a global computer network; Rental of access time to global computer networks; Electronic advertising services (telecommunications); Rental of telecommunication equipment; Providing of promotional documents and tools, including information guides, directories, posters and brochures, namely providing of access to promotional documents and tools, including information guides, directories, posters and brochures; Broadcasting of audiovisual programmes via computer terminals; Broadcasting of audiovisual programmes on global communications networks (such as the Internet) or private or restricted access networks (such as an intranet), or by cable, satellite or wave.

Class 41: Education; Providing of training; Coaching, providing of training and teaching, in particular for vocational purposes; Coaching, providing of training and distance learning (including via electronic or digital networks), in particular for vocational purposes; Educational examination; Teaching, training and coaching information; Academies education; Organisation of competitions for teaching purposes; Vocational guidance (education or training advice); Correspondence courses; Arranging and conducting of training workshops, colloquiums, conferences, congresses, seminars and symposiums; Organization of exhibitions for cultural or educational purposes; Education information; Education and providing of training; Provision of translation services; Publication of books; Lending of books, magazines, manuals, mobile library services; Publication of electronic books and journals on-line; Electronic desktop publishing; Publishing on media of all kinds, in particular paper, magnetic, optical, digital, electronic and audiovisual media, of periodical newspapers, texts (other than publicity texts) and images, and more generally, of specialised publications of all kinds; Publication of texts, other than publicity texts; Film production, multimedia production; Videotape production; Production and filming of publicity films and clips; Rental of motion pictures; Rental of sound recordings; Rental of video tape recorders/players or radio and television sets; Videotape editing; Production of radio and television programmes; Photography; Organization of competitions education or entertainment; Organisation and presentation of live performances, operating lotteries and organisation of balls; Booking of seats for shows; Running of museums; Photographic reporting; Sporting and cultural activities; Entertainment information, radio and television entertainment; Booking of seats for shows; Orchestra and choral services; Organisation of sports competitions; Operating sports centres or sports installations, sport camp services, sport instruction, gymnastic instruction, rental of stadium facilities, of sports equipment, except vehicles; Exhibition site management; Information relating to cultural activities and shows; Game services provided on-line from a computer network.

Class 42: Research and development (for others); Engineering evaluations and appraisals in the fields of science and technology; Scientific and technical research; Expert reports (engineering), research relating to environmental protection, geological surveys; Weather forecasting; Technical project studies; Computer system analysis; Computer system design; Recovery of computer data; Computer software consultancy; Installation, rental, updating, duplication, creation (design) and development of computer software; Computer programming; Protection against computer viruses, consultancy relating to computers; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from electronic media; Creating and maintaining web sites for others; Rental of software; Production (design and programming) of multimedia products; Digital imaging (digitisation of images); digital imaging services.

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

The terms ‘in particular’, ‘such as’ and ‘including’, used in the applicant’s list of services, indicate that the specific 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).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 services in Class 35

The contested arranging subscriptions to databases, database servers, servers providing access to a computer or data transmission network; arranging newspaper subscriptions for others; arranging subscriptions to periodical publications, published on media of all kinds, in particular electronic media; business administration of goods and services licences for others; business management and organization consultancy; document reproduction; procurement for others (purchasing goods and services for other businesses) in the field of university education; economic forecasting; cost price analysis; marketing studies; employment agencies; personnel management consulting; personnel recruitment; selection of personnel by means of psychological testing; computer services of all kinds, namely: management of files and databases, data entry and processing, word processing, statistical work, qualitative and quantitative studies, computer-aided data analysis, compilation and organisation of data into a master file, computerised file management; data search in computer files for others; research for sponsorship; newsclipping services; exhibitions for commercial or advertising purposes; on-line advertising on a computer network; subscriptions to a centre providing access to a computer network or data transmission service via a world-wide communications network (such as the internet) or private or restricted access communication networks (such as an intranet) are all related to advertising, marketing, business administration and business management services, administrative support and data processing services and they do not have any similarities with the opponent’s university educational services in Class 41. As such they obviously do not have the same nature, purpose and methods of use. Furthermore, they do not coincide in providers, distribution channels or relevant public. Finally, they are not complementary or in competition. They are considered dissimilar.

Contested services in Class 38

The contested services are broadcasting services and telecommunications services whose main purpose is the transmission or retransmission of audio-visual and multimedia content. On the other hand, the services of the opposing party are services of education. The mere fact that the use of the telecommunications services may be necessary for the opposing party's services (in the sense that nowadays educational services may be provided online), is not sufficient to establish similarity between them. In fact, it is rather unusual for companies offering telecommunication services to also offer services of education. These services have different natures and purposes. Furthermore, they do not coincide in their distribution channels and commercial origin. Therefore, these services are considered dissimilar.

Contested services in Class 41

The contested services education includes, as a broader category the opponent’s university educational services. 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 services providing of training; coaching, providing of training and teaching, in particular for vocational purposes; coaching, providing of training and distance learning (including via electronic or digital networks), in particular for vocational purposes; educational examination; teaching, training and coaching information; academies education; organisation of competitions for teaching purposes; vocational guidance (education or training advice); correspondence courses; arranging and conducting of training workshops, colloquiums, conferences, congresses, seminars and symposiums; organization of exhibitions for cultural or educational purposes; education information; education and providing of training; organization of competitions education or entertainment, which are all in the nature of education or training, are included in the broad category of, or overlap with, the opponent’s university educational services. Therefore, they are identical.

The contested lending of books, magazines, manuals, mobile library services; cultural activities; information relating to cultural activities and shows; sporting activities; organisation of sports competitions; operating sports centres or sports installations, sport camp services, sport instruction, gymnastic instruction, rental of stadium facilities, of sports equipment, except vehicles; are similar to the opponent’s university educational services as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

However, the contested provision of translation services; publication of books; electronic desktop publishing; publishing on media of all kinds, in particular paper, magnetic, optical, digital, electronic and audiovisual media, of periodical newspapers, texts (other than publicity texts) and images, and more generally, of specialised publications of all kinds; publication of texts, other than publicity texts; film production, multimedia production; videotape production; production and filming of publicity films and clips; rental of motion pictures; rental of sound recordings; rental of video tape recorders/players or radio and television sets; videotape editing; production of radio and television programmes; photography; organisation and presentation of live performances, operating lotteries and organisation of balls; booking of seats for shows; running of museums; photographic reporting; entertainment information, radio and television entertainment; booking of seats for shows; orchestra and choral services; exhibition site management and game services provided on-line from a computer network, have a different nature and purpose from the opponent's university educational 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 services are provided by the same undertakings. Therefore, they are dissimilar.

Contested services in Class 42

The contested research and development (for others); engineering evaluations and appraisals in the fields of science and technology; scientific and technical research; expert reports (engineering), research relating to environmental protection, geological surveys; weather forecasting and technical project studies are activities related to research and experimental development and contributing to the generation, dissemination and application of scientific and technical knowledge. Thus, they share the same general purpose of acquiring and/or imparting or disseminating knowledge or skills as the opponent’s university educational services in Class 41. Besides, while it is true that university educational services generally target the public at large, they may also target companies and professionals. Thus, both sets of services may be provided to the same end consumers. Finally, providers offering education services (such as in the present case, universities) are also likely to be involved in the provision of scientific and technological services (in the form of research centres where chemists, physicists, engineers, etc. work in cooperation with, or for the benefit of, private industrial undertakings to develop new technologies). Therefore, they are considered to be similar to the opponent’s university educational services.

The contested computer system analysis; computer system design; recovery of computer data; computer software consultancy; installation, rental, updating, duplication, creation (design) and development of computer software; computer programming; protection against computer viruses, consultancy relating to computers; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from electronic media; creating and maintaining web sites for others; rental of software; production (design and programming) of multimedia products; digital imaging (digitisation of images); digital imaging services are mainly services provided by people in the field of IT, such services being provided by professionals such as computer programmers. Hence, these services do not have the same purpose of the opponent’s university education services in Class 41. They have a different origin and different method of use. Moreover, they are neither in competition nor complementary. Therefore, they are considered to be dissimilar to the opponent’s university educational services.

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 or similar are directed at the public at large and at business customers with specific knowledge and expertise (e.g. companies seeking training or coaching for the staff in a given field).

In particular, educational services in Class 41 have a significant impact on the user’s career and future prospects, or one’s business performance. The same concerns services in Class 42. Research and development services are closely related to educational services, as explained in section a) of this decision. They are of a highly specialised nature and potentially expensive.

Therefore, the public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

3. The signs

UCO
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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, since the contested sign contains meaningful French terms.

The earlier mark is the word mark ‘UCO’, which has no meaning for the relevant public and is, therefore, distinctive.

In the contested sign, the letters 'UCO' are represented in standard bold in the centre of the sign. Above, there are two figurative elements and at the bottom of the sign another one. At the top there is a black circle, and below it, before the verbal element 'OCU', a horizontal bracket in bold. At the bottom of the sign there is a bold horizontal line. These figurative elements are rather banal geometrical shapes or punctuation symbols with a decorative nature, therefore, they have a very limited impact due to their very weak distinctive character.

In significantly smaller letters, and placed just below the letters ‘UCO’ are the words ‘UNIVERSITÉ CATHOLIQUE DE L’OUEST’ that will be wholly understood by the relevant public as ‘Catholic university of the West’. Given that the services for which the registration is sought are in the education and research and experimental development fields and that the provision of those services may be provided by a Catholic university in the West, these verbal elements are considered to be non-distinctive, since consumers would perceive that the services in question are simply provided by a catholic university in the west of a country. For a part of the public the verbal element ‘UCO’ is only weakly distinctive as it is will be seen as the abbreviation of the verbal elements which follow (UNIVERSITÉ CATHOLIQUE DE L’OUEST). As however these verbal elements are very small compared to the verbal element ‘UCO’ the Opposition Division will focus its comparison of the signs on the remaining part of the public, for which UCO, just like in the earlier mark, has no directly descriptive meaning and is therefore distinctive.

In addition to that, and due to its size and position within the sign, this expression will have a very limited impact in the overall perception of the mark for the services at issue, some may not even pronounce it.

Indeed, in the contested sign the letters ‘UCO’ by virtue of the large size and the position in the mark and the circle on top of these, which however is only weakly distinctive, are the dominant elements as they are the most eye-catching when compared to the remaining elements.

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, the signs coincide in the verbal element ‘UCO’, the only element of the earlier sign. ‘UCO’ is clearly visible and co-dominant in the contested sign as well. They differ in the additional non-distinctive verbal elements of the contested sign ‘UNIVERSITÉ CATHOLIQUE DE L’OUEST’ which have no counterparts in the earlier mark. Furthermore, the signs differ in the banal and purely decorative figurative elements of the contested sign which are considered to be weak.

They are visually to an above average degree because the contested sign incorporates the entire distinctive element ‘UCO’ of the earlier mark.

Case-law has confirmed that consumers naturally tend to shorten long marks in order to reduce them to elements that are easier to refer to and remember (07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, §42;30/11/2011, T 477/10, SE© Sports Equipment, EU:T:2011:707, §55; 16/09/2009, T 400/06, zerorh+, EU:T:2009:331, §58; 18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 48).

Therefore, aurally, the pronunciation of the signs coincides in the sound of the letters ‘UCO’, present in both signs. The pronunciation may differ in the sound of the non-distinctive additional elements ‘UNIVERSITÉ CATHOLIQUE DE L’OUEST’ of the contested sign. However, it should be noted that the non-distinctive verbal elements ‘UNIVERSITÉ CATHOLIQUE DE L’OUEST’ are unlikely to be pronounced in the contested mark, since they are descriptive in nature and they are written in very small font size.

Therefore, given the common element ‘UCO’, which will most likely be the only word pronounced in the contested mark, the signs are aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the verbal elements ‘UNIVERSITÉ CATHOLIQUE DE L’OUEST’, included in the contested sign, will be associated with the meaning explained above. However, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate the commercial origin. The contested sign has no concept that is distinctive. 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.

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 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

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 that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

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).

The services are partly identical, partly similar and partly dissimilar and they target both the public at large and the professionals whose degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

The marks at issue are visually similar to an above average degree and aurally identical as they coincide in the only element of the earlier sign, and the co-dominant element of the contested sign, the only element most likely to be pronounced in the contested sign. Conceptually, they cannot be compared.

The Opposition Division considers that the differences between the signs — which are limited to non-distinctive and weak elements of the contested sign — are clearly not sufficient to outweigh the aural identity and strong visual similarities between them. Therefore, there is a likelihood of confusion because the differences between the signs are confined to non-distinctive and weak elements and aspects.

Consequently, it is concluded that the relevant public could believe that the services found to be identical or similar come from the same undertaking or economically linked undertakings.

Account is taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Therefore, in an overall assessment, it is reasonable to assume that when they encounter the contested sign in relation to identical or similar services, consumers, even those with a high degree of attention, are likely to confuse the signs and believe that these services come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the French-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 on the basis of the opponent’s European Union trade mark registration No 5 000 633. It follows that the contested trade mark must be rejected for the services found to be identical or similar.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

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

• Spanish trade mark registration No 2 970 748 for the word mark ‘uco’ in Class 41.

Since this mark invoked by the opponent is the same mark (differing only in the irrelevant aspect of capitalisation) as the one compared before and covers the same scope of services for which use has been proven, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Lars HELBERT

Konstantinos MITROU

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.