OPPOSITION No B 2 786 203

The Team Brand Communication Consultants Limited, 30 Park Street, EC4A 1BL, London, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford’s Inn, EC4A 1BL, London, United Kingdom (professional representative)

a g a i n s t

4 Flying s.r.l, Viale Edison 6, 37059 Campagnola di Zevio (VR), Italy (applicant), represented by Mittler & C. S.R.L., Viale Lombardia 20, 20131 Milano, Italy (professional representative).

On 28/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 786 203 is upheld for all the contested goods.

2. European Union trade mark application No 15 534 415 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Implementing Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 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 goods of European Union trade mark application No 15 534 415 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 2 646 275 ‘THE TEAM’ (word). The opponent invoked Article 8(1)(b) and Article 8(4) and (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.

1. The goods and services

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

Class 35: Advertising and marketing services; promotional services; public relations services; brand consultancy and brand creation services; brand evaluation services; brand positioning; brand testing; brand strategy; franchising services; marketing and advertising media management services; media buying services, namely, purchasing time and space for the delivery of advertising messages through broadcast time, print space, indoor space, outdoor space or other media such as CDs and DVDs or website space/time; event marketing and management services; professional consultation and advice relating to events marketing and management; sponsorship consultancy services; business services relating to the provision of sponsorship of the arts, sports, music and theatre events; management and representation of athletes, sportspeople, artistes and celebrities; business management and research; market research; business administration and business consultancy services; business management of event hospitality services; recruitment services; opinion polls; compilation, processing and analysis of statistics; business introduction services; arranging and conducting of commercial exhibitions and shows; production of advertisements for radio, video, film, computers, internet web sites, television and mobile devices; all the aforesaid services also provided on-line via computer websites or through wireless transmissions; advertising by mail order; compilation of direct mailing lists; compilation of mailing lists; direct mail advertising; marketing by mail; preparation of mailing lists; preparation of mailing lists for direct mail advertising services; direct marketing, database marketing, telemarketing; statistical analysis and reporting; database management; information services (business); letter and direct mail services; business consulting services in the field of electronic commerce; advertising and marketing management agency services, namely, the creation, development and dissemination of advertising and promotional materials via direct mail, newspaper, radio, television, mobile devices, a global computer network and other interactive media; research services and information services relating to all the aforesaid; Internet online storage; storage of digital media, photographs, film, video tape, sound tracks, emails; storage of documentary records; storage of documents; storage of electronically stored data or documents; internet based storage space; remote file storage; electronic archives; file and document retrieval; secure internet storage; storage of secure digital media, photographs, film, video tape, sound tracks, emails; file and document retrieval; secure internet storage; secure storage of documentary records; secure storage of documents; secure storage of electronically stored data or documents; secure internet based storage space; secure remote file storage; secure electronic archives; secure file and document retrieval; design of publicity and advertising materials; creation, research, development and implementation of brand names, slogans, lettering and logos; mobile advertisements and direct mail advertisements; computer services, namely, designing and implementing banner advertisements.

Class 41: Sound and video production and post production services to the advertising, motion picture, video, broadcast, satellite, cable and television industries; music recording; sound editing and enhancement; mixing of dialogue, music, sound effects, dialogue and narration; automated dialogue replacement; recording live sound effects; audio post-production, audio playback and augmentation; looping/foreign language dubbing and recording; video post-production, audio post-production; adding visual effects and graphics to video tape, audio tape, digital media and film; mastering, editing, augmenting, restoring, converting and reformatting of film, digital media and video tape; film, digital media and video tape editing; CD, DVD and electronic media mastering; production and special effects for advertisements, films and television; renting of equipment for use in creating film, digital media and video tape, and for use in post-production work; consultation relating to the foregoing; entertainment; education, instruction, tuition and training; entertainment, education and instruction by means of or relating to radio and television; production, presentation, distribution, syndication, networking and rental of television and radio programmes incorporating advertisements, interactive entertainment, films and sound and video recordings, interactive compact discs and CD-ROMs; production and rental of educational and instructional materials; publishing services; provision of online electronic publications, digital music and digital entertainment (non-downloadable); exhibition services; rental of radio and television broadcasting facilities; film and animation exploitation services; including all of the aforesaid services provided online from a computer network or via the internet or extranets.

Class 42: Design research; illustrating services (design); industrial and commercial design services; design services, design, creation, research, development and implementation of packaging; research into and design of new products; advertising research services; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; computer services, namely, designing and implementing network web sites, electronic commerce software applications and information technology computer network systems for others; website design services; computer aided design of video graphics; creation, editing and updating of website content; information, consultancy and advisory services, all relating to the aforesaid services.

The contested goods, after limitation, are the following:

Class 9: Data processors; Integrated software packages; data processing programs; computer utility programs for file management; interactive computer software enabling exchange of information; computer software for database management; electronic publications, downloadable; data processing systems; computer systems; Interactive computer systems; computer application software; computer software for business purposes; computer programmes for data processing; media software; computer groupware; embedded operating software; integrated software packages; computer programmes for data processing; computer e-commerce software; computer software for creating dynamic websites; computer software for document management; industrial process control software; application software for cloud computing services; computer software for processing digital images; website development software; software for processing digital images.

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 ‘namely’, used in the opponent’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.

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.

The contested data processors are considered similar to the opponent’s computer services, namely, designing and implementing network web sites, electronic commerce software applications and information technology computer network systems for others in Class 42 as they usually coincide in their producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested integrated software packages; data processing programs; computer utility programs for file management; interactive computer software enabling exchange of information; computer software for database management; data processing systems; computer systems; Interactive computer systems; computer application software; computer software for business purposes; computer programmes for data processing; media software; computer groupware; embedded operating software; integrated software packages; computer programmes for data processing; computer e-commerce software; computer software for creating dynamic websites; computer software for document management; industrial process control software; application software for cloud computing services; computer software for processing digital images; website development software; software for processing digital images are various types of computer software and computer systems. They are similar to the opponent’s computer services, namely, designing and implementing network web sites, electronic commerce software applications and information technology computer network systems for others in Class 42. These goods and services, even if of a different nature, usually have the same commercial origin and target the same public. Furthermore, they are complementary.

The contested electronic publications, downloadable are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers, etc. It is becoming common to distribute books, magazines and newspapers to consumers through tablet-reading devices by means of so-called ‘apps’ in the form of electronic publications. These goods are similar to the opponent’s provision of online electronic publications, digital music and digital entertainment (non-downloadable) in Class 41 as they satisfy the same need of online electronic publications. Therefore, they have the same purpose and can be in competition. These goods and services have the same distribution channels and target the same public. Their commercial origin also overlaps.

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 contested goods found to be similar to the opponent’s services are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

3. The signs

THE TEAM
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier mark is a word mark composed of the term ‘THE TEAM’.

The contested sign is figurative and is composed of the word ‘TEAM’, depicted in large upper case bold black characters, and a much smaller inscription below, ‘CROSS MEDIA SOLUTION’, depicted in lower case standard bold characters. On the left-hand side, there is a large figurative element composed of one large square divided into four smaller squares in shades of blue and black. Superimposed on the square is a large white lower case letter ‘e’.

The element ‘THE TEAM/TEAM’ in the signs will be understood as any group of people that work together. The applicant argues that this element lacks distinctiveness as it simply indicates that the opponent’s services are rendered by a team of professionals, e.g. engineers. The Opposition Division, however, does not share this view and considers that there is no clear and direct link with the goods and services in question and that therefore this element is considered distinctive in both signs.

The phrase ‘CROSS MEDIA SOLUTION’ will be perceived as a promotional slogan indicating that the goods offered cover a wide range of media tools; as such, the impact of this expression on the comparison of the signs is limited. Due to its size and position within the sign, it is not noticeable at first sight and is likely to be disregarded by the relevant public.

The letter ‘e’ of the contested sign is widely used throughout Europe to refer to ‘electronic’. Bearing in mind that the relevant goods are computer related, this element is at best weak for these goods

The earlier mark has no element that could be considered clearly more dominant than other elements.

The expression ‘CROSS MEDIA SOLUTION’ is written in relatively small letters and therefore is less eye-catching than the other elements, which dominate the contested sign.

Visually, the signs coincide in the distinctive word ‘TEAM’, which also constitutes a co-dominant element of the contested sign, and differ in the remaining elements. However, the differentiating elements — the barely visible slogan, the article ‘THE’ of the earlier sign and the weak letter ‘e’ of the contested sign — have less impact. The signs also differ in the contested sign’s figurative element in the form of a colourful square serving as the background for the letter ‘e’, but this is not particularly elaborated. Furthermore, when signs consist of both verbal and figurative components, in principle the verbal component of the sign usually has a stronger impact on consumers than the figurative component. This is because the public does not tend to analyse signs and will more readily refer to the signs in question by their verbal than by their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end, it cannot be inferred from this that, in the present case, the difference between the letters ‘THE’ and the letter ‘e’ does not prevent the signs at issue from being considered similar: as the letters ‘THE’ will be seen merely as the definite article and the letter ‘e’ is at best weak, their impact on the overall impression given by the signs is limited.

Therefore, the signs are visually similar to an average degree.

Aurally, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Therefore, taking into account the small size and the position of the verbal elements ‘CROSS MEDIA SOLUTION’, the contested sign is likely to be pronounced simply as ‘e TEAM’ when referred to by consumers. Therefore, the pronunciation of the signs coincides in the sound of the distinctive word ‛TEAM’, present identically in both signs. The signs differ aurally in the sound of the letters ‛THE’ of the earlier sign and of the letter ‘e’ of the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the element ‘TEAM’, the signs are conceptually similar to an average degree.

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.

5. Global assessment, other arguments and conclusion

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).

In the present case it has been found that the contested goods are similar to the opponent’s services and that they target both the general and a professional public. The level of attention varies from average to high.

The signs are visually and conceptually similar to an average degree and aurally highly similar. The earlier mark enjoys an average degree of distinctiveness.

The similarities between the signs lie in the coinciding and distinctive word ‘TEAM’, which plays a distinctive role in both signs, while the differences lie in the elements that have less impact on the consumer for the reasons explained above.

In view of the foregoing, and particularly because the similarity between the marks results from the distinctive element ‘TEAM’, which co-dominates the overall impression of the contested sign, the Opposition Division is of the opinion that the similarities between the signs cannot be outweighed by their differences, and that the relevant public, even that with higher attentiveness, would believe that the goods and services found to be similar come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 646 275. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Katarzyna ZANIECKA

Justyna GBYL

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.