OPPOSITION No B 2 826 207

Blacksquared GmbH, Rudolf-Breitscheid-Str. 34, Potsdam, Germany (opponent)

a g a i n s t

Associação We Chrs, Rua Corte Real 555, 3, Porto, Portugal (applicant), represented by Morais Leitao Galvao Teles, Soares da Silva & Associados – Sociedade de Advogados RL, Rua Castilho,165, Lisboa, Portugal (professional representative).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 826 207 is upheld for all the contested services.

2. European Union trade mark application No 16 008 401  is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR 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 16 008 401, WE CHANGERS. The opposition is based on European trade mark registration No 9 702 275, The Changers. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

In its observations of 26/10/2017 the applicant argues that the earlier mark is under the obligation of use and that the Office should invite the opponent to submit the evidence to prove it. However, as the request was submitted after the EUTMDR entered into force, such requests to submit the evidence of use are admissible only if they are submitted as an unconditional request in a separate document.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Battery chargers; Computer software for the administration of databases for business and private networks in the fields of renewable energy and sustainable resource conservation; Computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks in the fields of renewable energy and sustainable resource conservation; Computer software for controlling apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electricity.

Class 35: Computerised file managing; Provision of auctioneering services on the Internet; Producing statistics in the fields of renewable energy and sustainable resource conservation; Commercial information and consultancy for consumers in connection with the use renewable energies and sustainable resource conservation; Maintenance of data in computer databases in the fields of renewable energy and sustainable resource conservation; Presentation of companies on the Internet and in other media in the fields of renewable energy and sustainable resource conservation; Presentation of goods and services of others on the Internet and in other media in the fields of renewable energy and sustainable resource conservation; Statistical information; Systematic ordering of data in computer databases; Promotion of goods and services of others, in particular by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the websites of others, and discount information, in the fields of renewable energy and sustainable resource conservation; Arranging of commercial transactions, for others, including within the framework of e-commerce; Procurement of contracts for others, including for the buying and Sale of goods and For the providing of services, in the fields of renewable energy and sustainable resource conservation; Arranging of contracts with electricity suppliers and Electricity consumers; Compilation and management of on-line computer databases and on-line searchable databases.

Class 36: Providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio-visual information, on computer and communication networks, in the fields of renewable energy and sustainable resource conservation; Financial exchange services, namely providing a virtual currency for use by members of an online community via computer and communication networks, in the fields of renewable energy and sustainable resource conservation.

Class 38: Providing access to global computer networks in the fields of renewable energy and sustainable resource conservation; Providing and operating Internet chat rooms, online forums and portals on the Internet in the fields of renewable energy and sustainable resource conservation; Providing online communications links which transfer web site users to other local and global web pages; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; Providing access to computer databases for social networks in the fields of renewable energy and sustainable resource conservation; Videoconferencing; Electronic mail; Computer-aided transmission of messages and images; Collection and delivery of messages; Web messaging; Providing online directory information services for information relating to virtual communities and transmission of photographic images in the fields of renewable energy and sustainable resource conservation; Data transmission and instant messaging services; Providing an online network service that enables users to transfer personal identity data to websites and share personal identity data with and among websites.

Class 41: Competition services and Incentive reward schemes for the recognition, rewarding and encouragement of individuals and groups involved in the fields of renewable energy and sustainable resource conservation; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; Providing online directory information services for information relating to the exchange of photographs and the exchange of videos in the fields of renewable energy and sustainable resource conservation.

Class 42: Providing information relating to goods and services from searchable directories and databases containing information, including texts, electronic documents, databases, graphics and audio-visual information, via computer and communication networks, in the fields of renewable energy and sustainable resource conservation; Providing information on the Internet in the fields of renewable energy and sustainable resource conservation; Providing and operating platforms on the Internet in the fields of renewable energy and sustainable resource conservation; Creation and development of computer software and hardware; Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; Computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; Providing use of software applications through a website; Computer services, namely creating virtual communities for registered users to organise groups and events, participate in discussions, and engage in social, business and community networking in the fields of renewable energy and sustainable resource conservation.

Class 45: Dating clubs, in particular on the Internet; Personal and social services to meet the needs of individuals; Providing information relating to social and political matters in the fields of renewable energy and sustainable resource conservation, from searchable directories and databases of information, including texts, electronic documents, databases, graphics and audio-visual information, via computer and communication networks; providing online directory information services for information relating to social networks in the fields of renewable energy and sustainable resource conservation.

The contested services are, after limitation, the following:

Class 38: Providing online forums; providing internet chatrooms; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting.

Class 41: Photographic reporting; arranging and conducting of colloquiums; rental of motion pictures; coaching; training; education services; videotape editing; Providing on-line electronic publications; On-line publishing services; disseminating information and providing, sponsoring and hosting seminars, presentations and discussion groups and providing training in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting.

Class 45: On-line social networking services all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting.

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

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, as well as the term ‘strictly related’ used by the applicant, are exclusive and restrict the scope of protection only to the goods and 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.

Concerning the limitation done by the applicant, it should be underlined that despite this limitation as to specific areas or fields of expertise, still the services under comparison have the same nature. Furthermore, the limitations of both parties’ services are mutually compatible, as for instance, coaching related to humanitarian activities covered by the contested mark and the opponent’s incentive reward schemes for the recognition of groups involved in the field sustainable resource conservation are activities that could be related to the same project or area of activity of the same organisation. Finally the opponent is not obliged to argue as to why it considers the relevant services similar or not after a limitation since such a comparison is performed by the Opposition Division according to the law provided in Article 8 (1) (b) EUTMR.

Contested services in Class 38

The contested Providing online forums; providing internet chatrooms; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting are at least similar to the opponent’s Providing and operating Internet chat rooms, online forums and portals on the Internet in the fields of renewable energy and sustainable resource conservation as those services do have the same nature and purpose, namely to transmit and make available various types of content by telecommunication means. They can also coincide in provider and distribution channels.

Contested services in Class 41

The contested photographic reporting; rental of motion pictures; videotape editing; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting, are at least similar to the opponent’s providing online directory information services for information relating to the exchange of photographs and the exchange of videos in the fields of renewable energy and sustainable resource conservation as these services can coincide in provider, have the same purpose, namely to make available to the public the content of specific pictures, videos and edited videotapes. They can also be complementary.

The contested coaching; training; education services; arranging and conducting of colloquiums; providing, sponsoring and hosting seminars, presentations and discussion groups and providing training in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting are similar to the opponent’s Incentive reward schemes for the recognition, rewarding and encouragement of individuals and groups involved in the fields of renewable energy and sustainable resource conservation as these services relate to the same nature, namely education and/or change of behaviour of people, and purpose, namely to enable people to improve. Also sponsoring services can have as their purpose and nature to improve people’s performance, inasmuch as a sponsor can provide a seminar on increasing psychological strength, engage a special coach or trainer on improving charitable performance etc. In addition these services could have the same provider, target the same end consumers and have the same distribution channels.

The contested providing on-line electronic publications; on-line publishing services; and disseminating information in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking;; all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting are similar to the opponent’s providing online directory information services for information relating to the exchange of photographs and the exchange of videos in the fields of renewable energy and sustainable resource conservation as those services relate to the same nature and purpose. In addition these services could target the same end consumers and have the same provider and distribution channels.

Contested services in Class 45

The contested on-line social networking services all of which strictly related to charitable, philanthropic, volunteer, public and community services, humanitarian activities, as well as social entrepreneurship, social responsibility and social consulting are services offered to build social relations with other people. Therefore these services can be offered by the same providers, can have the same distribution channels and can refer to the same relevant public as the opponent’s dating clubs, in particular on the Internet. Furthermore, these services can be complementary as well. Therefore, these services are considered similar.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to vary between average and high, as business consumers might apply a higher degree of attention when choosing for instance incentive reward schemes.

3. The signs

The Changers	WE CHANGERS
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 verbal components of the signs under comparison are meaningful to the English-speaking part of the public in the relevant territory. To take into account the semantic content of the elements and in particular the common elements ‘CHANGERS’ in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

The earlier mark is a word mark consisting of the words ‘The Changers’. Changers can refer to people who are changing something, e.g. career changing, changing a record, changing money machines etc., and a ‘changer’ can either be a person or a machine. ‘The’ is the English definite article put before a noun and together with the word ‘changers’ creates a conceptual unit that, considering the services at issue, could be perceived as meaning, e.g. ‘people/things that make change’. The contested sign consists of the words ‘We changers’ and contains the identical verbal element ‘Changers’ as the earlier right. ‘We’ is an English pronoun and in combination with the word ‘changers’ they are likely to be perceived as a conceptual unit that means, for instance, a group of people that make change. With respect to the services found to be similar to various degrees, at least a part of the English speaking public are likely to understand an allusion (in both signs) to promotion and support of a certain change, but such an allusion is considered not to be specific enough to significantly affect the distinctiveness of the expressions in respect to the relevant services.

Visually and aurally, the two word marks coincide in the word ‘Changers’. However, the signs differ at their beginnings, where the earlier right begins with the word ‘The’, while the contested sign begins with ‘We’.

Therefore, the signs are highly similar as the verbal element ‘Changers’ is identically contained in both signs and will be identically pronounced. Even if the public notes the different beginnings, these small differences are not sufficient to eliminate the visual and aural similarity of the signs due to the identical second – and much longer - verbal element.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the expressions. As the signs will be associated with a similar meaning (i.e. some people/things that make change vs a group of people that make change), the signs are conceptually highly similar. Account must be taken of the fact that the different beginnings of the earlier mark, namely ‘The’ in the earlier mark and the ‘We’ in the contested cannot be separated from the conceptual units they belong to and therefore are unable to establish any significant conceptual distance between 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 claim that its mark is reputed in the sense of Article 8 (5) EUTMR, but did not submit any evidence is this respect.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In spite of what has been stated above in section c) of his decision, namely that for at least a part of the public there might exist an allusion to change, the distinctiveness of the earlier mark must be seen nevertheless as normal in relation to the services held similar.

5. Global assessment, other arguments and conclusion

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).

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.

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).

The services at issue are similar and the earlier mark is of an average degree of distinctiveness. The relevant public is comprised of the public at large and of business customers and the degree of attention is likely to vary from average to higher than average. The verbal element ‘CHANGERS’ is included in both signs. The signs are visually and aurally similar to a high degree and conceptually similar to a high degree as well. Importantly, the differing elements ‘The’ and ‘We’ do not create any significant conceptual difference between them and, considering the principle of imperfect recollection explained above, the slight visual and aural differences are unlikely to safely exclude the likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Taking into account all the above, the small differences between the signs are incapable of sufficiently counteracting their striking similarities to enable the relevant public with an imperfect recollection to safely distinguish between them in relation to similar services.

Therefore, the opposition is well founded on the basis of the European trade mark registration No 9 702 275. It follows that the contested trade mark must be rejected for all the contested services.

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 ground of opposition, namely Article 8 (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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Vita VORONECKAITE

Karin KLÜPFEL

Alexandra APOSTOLAKIS

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.