OPPOSITION No B 2 828 856

Echeyde S. Coop. De Enseñanza, La Vica, 05 Ofra, 38010 Santa Cruz de Tenerife- Tenerife, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002, Alicante, Spain (professional representative)

a g a i n s t

Serge Nicole, 8 rue Chaptal, 75009 Paris, France (applicant), represented by Cabinet @Mark, 16 rue Milton, 75009 Paris, France (professional representative).

On 06/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 828 856 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 682 016 (figurative mark: ) namely against all the goods and services in Classes 16 and 41. The opposition is based on Spanish trade mark registration No 2 506 313 (figurative mark: ). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods and services

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

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

The contested goods and services are the following:

Class 16: Printed matter; Bookbinding material; Photographs; Stationery; Artists' materials; Paint brushes; Instructional and teaching material (except apparatus); Printers' type; Printed matter; Leaflets; Printing blocks; Boxes of cardboard or paper; Writing instruments; Flyers; Posters; Periodicals; Journals; Magazines [periodicals]; Printed publications; Scrapbooks; Encyclopaedias; Guidesbrochures; Catalogues; Almanacs; Scrapbooks; Cards; Books; Newspapers; Prospectuses; Pamphlets; Calendars; Paintings (pictures) framed or unframed; Aquarelles; Patterns for dressmaking; Drawings; Paper stationery; Paper handkerchiefs; Face towels of paper; Table linen of paper; Hygienic paper; Garbage bags of paper or of plastics; Stickers (stationery); Mats for beer glasses; Chart pointers; Pads (stationery); Sketch pads; Boxes of cardboard or paper; Writing or drawing books; Tear-off calendars; Notebooks; Cardboard tubes; Drawings; Graphic reproductions; Rub down transfers; Wrapping paper; Signboards of paper or cardboard; Paper pennants; Menus of paper or cardboard for restaurants; Envelopes being stationery; figurines (statuettes) of paper mache; Engravings; Postcards; Postage stamps; Bags for packaging of paper or plastic; Paper sacks; Palettes for painters; Painters' easels; Canvas for painting; Pencil lead holders; Penholders; Pencil stands; Drafting rulers; Ink pads; Blotters; Adhesives for stationery or household purposes; Typewriters; Office requisites; Paper; Paperboard; Engravings; Lithographs; Bags [envelopes, pouches] of paper or plastics, for packaging; Paper sacks; Pictures; Notepaper.

Class 41: Providing of training; Entertainment; Sporting and cultural activities; Leisure facilities; Publication of books; Library services; Videotape production; Rental of motion pictures; Rental of show scenery; Videotape editing; Photography; Arranging competitions (educational or entertainment), games, information campaigns and professional or non-professional events for cultural, educational or entertainment purposes; Arranging and conducting of conferences, forums, congresses, colloquiums, seminars, symposiums, trade fairs and exhibitions, whether professional or not, for cultural, educational or entertainment purposes; Organization of exhibitions for cultural or educational purposes; Booking of seats for shows; Game services provided on-line from a computer network; Publication of electronic books and journals on-line; Electronic desktop publishing; Museum facilities (providing-) presentation, exhibitions); Organisation of exhibition and museum tours; Photographic reporting; Leisure services; Show scenery (rental of-); Party planning (entertainment); Gaming; Publishing services; Education; Entertainment information; Workshops (Arranging and conducting of -) [training]; Organisation of antiques fairs for cultural, educational or entertainment purposes.

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 16

The contested printed matter (mentioned twice); instructional and teaching material (except apparatus); periodicals; journals; magazines [periodicals]; printed publications; encyclopaedias; almanacs; books; newspapers; prospectuses; pamphlets; leaflets; flyers; posters; drawings; graphic reproductions are similar to the opponent’s education. The contested goods will include books and other printed matter with educational content. They are complementary goods and services and will normally be directed at the same relevant public through the same distribution channels.

Contrary to the view of the opponent, the contested stationery; paper stationery; stickers (stationery); writing or drawing books; pads (stationery); notebooks; notepaper; sketch pads; boxes of cardboard or paper; pencil lead holders; penholders; pencil stands; drafting rulers; ink pads; blotters; office requisites; paper; envelopes being stationery; chart pointers; boxes of cardboard or paper; writing instruments; tear-off calendars; calendars; adhesives for stationery or household purposes are all items of stationery that are dissimilar to the opponent’s education. These goods and services have a different nature and purpose. Although they may be directed at the same target audience, they are usually produced by different undertakings. They are not in competition and they are not complementary. They are dissimilar to all of the other opponent’s services for the same reasons. Although it is true that some schools may supply items of stationery, as argued by the opponent, this is the exception rather than the rule and it is usually for promotional purposes and not in order to establish the educational establishment a position in the market for stationery.

The contested cardboard tubes; rub down transfers; wrapping paper; signboards of paper or cardboard; paper pennants; menus of paper or cardboard for restaurants; figurines (statuettes) of paper mache; engravings; postcards; postage stamps; bags for packaging of paper or plastic; paper sacks; palettes for painters; painters' easels; canvas for painting; typewriters; paperboard; engravings; lithographs; bags [envelopes, pouches] of paper or plastics, for packaging; paper sacks; pictures; bookbinding material; photographs; artists' materials; paint brushes; printers' type; scrapbooks (mentioned twice); guides brochures; catalogues; cards; paintings (pictures) framed or unframed; aquarelles; patterns for dressmaking; paper handkerchiefs; face towels of paper; table linen of paper; hygienic paper; garbage bags of paper or of plastics; mats for beer glasses; printing blocks are dissimilar to all of the opponent’s services. The nature of these goods and services differ, as do their purpose, method of use, relevant consumer, distribution channels and providers. They are neither in competition nor are they complementary.

Contested services in Class 41

Education; providing of training; entertainment; sporting and cultural activities appear identically in both lists of services.

The contested arranging and conducting of conferences, forums, congresses, colloquiums, seminars, symposiums, trade fairs and exhibitions, whether professional or not, for cultural, educational or entertainment purposes; workshops (arranging and conducting of -) [training] are included in the broad category of, or overlap with the opponent’s providing of training. Therefore, they are identical.

The contested organization of exhibitions for cultural or educational purposes; organisation of antiques fairs for cultural, educational or entertainment purposes; organisation of exhibition and museum tours; museum facilities (providing-); presentation, exhibitions are included in the broad category of, or overlap with the opponent’s cultural activities. Therefore, they are identical.

The contested leisure facilities; videotape production; rental of motion pictures; arranging competitions (educational or entertainment), games, information campaigns and professional or non-professional events for cultural, educational or entertainment purposes; booking of seats for shows; game services provided on-line from a computer network; leisure services; party planning (entertainment); gaming; entertainment information are at least similar to the opponent’s entertainment. The purpose of the services may coincide, that is to entertain. They may be directed at the same relevant public and come from the same providers.

The contested library services are similar to the opponent’s providing of training. It is common for schools and universities to offer a library for their students. The purpose of the services coincides, that is to aid students in their learning process. Distribution channels, relevant public and providers may coincide.

The contested photographic reporting; publishing services; publication of books; publication of electronic books and journals on-line; electronic desktop publishing; videotape editing; photography; rental of show scenery; show scenery (rental of-); are at least similar to a low degree to the opponent’s entertainment. The services are complementary and distribution channels may coincide.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at professional customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign is a figurative mark composed of the letter ‘E’ in a capital blue basic typeface. The letter has a blue line under it and one above it. ‘E’ has no meaning in relation to the goods and services in question and so is distinctive. The lines are simple and basic geometric forms and so are non-distinctive.

The earlier mark is a figurative mark composed of the letter ‘F’ or ‘E’ depending on the perception of the relevant consumer. It is likely that part of the public will perceive the sign as a letter ‘F’ presented in a bold capital basic blue font, on a long blue line that extends toward the right. Above the line and to the right of the letter appears another line, this time discontinuous, that forms an upward peak in the centre. Part of the public may perceive the letter to be an ‘E’ with an unusually long extended lower horizontal stroke. Neither ‘F’ nor ‘E’ have any meaning in relation to the services in question and so they are distinctive. The figurative device in the earlier mark has no meaning and is a distinctive element.

The Opposition Division will first examine the opposition in relation to the part of the public that recognises the ‘E’ in both signs.

Visually, the signs coincide in ‘E’, which is a distinctive element portrayed in blue. However, they differ significantly in the graphical representation and the visual impression is markedly distinct. The contested sign has two simple thin lines above and below the letter ‘E’ while the earlier mark is a much more elaborate combination of thick straight and curved lines into which the ‘E’ is integrated.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Therefore, the signs are visually similar if at all to a very low degree only.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛E’, present identically in both signs and distinctive in relation to the goods at issue.

Therefore, the signs are aurally identical.

Conceptually, both signs will be perceived as the letter ‘E’.

The Office follows the approach that single letters can have an independent conceptual meaning. The Court has confirmed this approach (judgment of 08/05/2012, T-101/11, G, EU:T:2012:223, § 56, appealed as C-341/12 P, G, EU:C:2013:206), finding conceptual identity where both trade marks can be seen as the same letter.

As this is the present case, the signs are considered conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally taking into account all the factors relevant to the circumstances of the case (22/06/1999, C-342/97 Lloyd Schuhfabrik, EU:C:1999:323; § 18).

In the present case the goods at issue are partly identical and similar to varying degrees and partly dissimilar. In the case that the consumer recognises the letter ‘E’ in both signs, the signs are aurally and conceptually identical and the signs are visually similar if at all to a very low degree only. The earlier mark has a normal distinctive character. The level of attention of the relevant public varies from average to above average.

It follows from case law that in the assessment of likelihood of confusion between signs comprising the same letters, the visual comparison is in principle decisive. The aural and even conceptual identity may be overridden by sufficient visual differences. Indeed the Court made it clear that in cases of trade marks consisting of the same letter, a sufficiently different visual impression may safely rule out a likelihood of confusion even in cases when there is aural and conceptual identity (10/05/2011, T.187/10, G. EU:T:2011:202, § 60 (emphasis added).

Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing the same single letter, are stylised in a sufficiently different way so that their different overall graphical representation eclipses the common verbal element.

In the present case, an essential point in the assessment is that the visual differences between them are very pronounced and immediately perceptible. Even taking into consideration the imperfect recollection of the consumer who will not examine trade marks side by side but must rely on the imperfect image of them kept in mind, the Opposition Division is of the opinion that it is unlikely that such differences become blurred in the public’s mind.

Considering all the above, there is no likelihood of confusion on the part of the public that recognise the ‘E’ in both signs, even for those goods found to be identical and for those where the level of attention of the consumer is average.

It follows that for that part of the public that do not recognise the ‘E’ in the earlier mark, the public will perceive the signs as even less similar, with no conceptual or phonetic identity, and so the likelihood of confusion is even more remote.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Beatrix STELTER

Lynn BURTCHAELL

Tobias KLEE

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.