OPPOSITION No B 3 026 005

Scout24 AG, Bothestraße 11-15, 81675 München, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

D-net, Via Parini 33, Lecco, Italy (applicant)

On 12/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 026 005 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 351 701 for the figurative mark , namely against all the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 13 636 791 for the word mark ‘Scout24’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 636 791.

1. The goods and services

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

Class 12: Vehicles, apparatus for locomotion by land, in the air or on water, other than motorcycles and stuctural parts therof.

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38: Telecommunications.

Class 39: Transport; packaging and storage of goods; travel arrangement.

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

Class 42: Scientific and technological services and research and design relating thereto; Design and development of computer hardware and software.

Class 44: Medical services; human hygiene and beauty care; agriculture, horticulture and forestry services.

Class 45: Legal services; security services for the protection of property and individuals; dating services; escorting of persons; partnership analysis; providing of content retrievable via the internet in relation to dating agencies.

The contested services are the following:

Class 35: Business information for enterprises (provision of -).

The contested business information for enterprises (provision of -) overlaps with the broad category of the opponent’s business management. Therefore, they are identical.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at business customers with specific professional knowledge or expertise.

Bearing in mind the specialised nature of the relevant services and the fact that they may have important consequences for the business of the users, consumers' level of attention would be higher than average when choosing them.

3. The signs

Scout24
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier trade mark is a word mark.

The contested sign is a figurative mark with a purely decorative, and therefore non-distinctive, figurative element.

Given its widespread use, especially in the field of business, the coinciding element ‘Scout’ is an English word that will be understood by the relevant public (business customers with specific professional knowledge or expertise), including by non-native English speakers (21/12/2009, R1617/2006-4 PREMIUM SCOUT, § 40), as meaning ’explore or examine (a place or area of business) so as to gather information about it’ (information extracted from Oxford Dictionaries on 30/11/2018 at https://en.oxforddictionaries.com/definition/scout). Bearing in mind that the relevant services are business management and provision of business information for enterprises, respectively, the element ‘Scout’ has a close connection with the search of information for companies and is therefore of very limited distinctiveness.

The element ‘24’ of the earlier sign will be associated with the availability of the relevant services twenty four hours a day, and as such it is descriptive. Therefore, this element is non-distinctive for the relevant services.

On account of its identical or similar equivalents in most of the official languages in the relevant territory, such as Bulgarian, Croatian, English, French, German, Portuguese, Romanian, Slovenian or Spanish, the word ‘Metal’ of the contested sign is likely to be understood throughout the whole territory of the European Union as meaning ‘hard, shiny, malleable material of the kind originally represented by gold, silver, copper, etc. (see sense A. 1b), esp. as used in the manufacture of objects, artefacts, and utensils’ (information extracted from Oxford Dictionaries on 30/11/2018 at http://www.oed.com/view/Entry/117221?rskey=70yi28&result=1#eid). The opponent maintains that this element is clearly descriptive; however, the Opposition Division is of the view that it does not describe the contested services. Even if this word were to allude to the field in relation to which the contested services would be provided, this is not obvious from the specification of the applicant’s services and the opponent has not provided arguments or evidence in this respect. In any event, ‘Metal’ would still not be devoid of distinctiveness or less distinctive than the other element of the contested mark, ‘Scout’.

Finally, contrary to the opponent's view, the signs have no elements that could be considered clearly more eye-catching (dominant) than other elements.

Visually, the signs coincide in the verbal element ‘Scout’ whereas they differ in the additional verbal elements ‘24’ in the earlier mark and ‘Metal’ in the contested trade mark and in the latter's figurative elements, including its colours.

The beginnings of the signs are different. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, and taking into account the conclusions regarding the distinctiveness of their respective elements, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛Scout’, present in both signs. The pronunciation differs in the pronunciation of the additional terms, namely the number ‘24’ of the earlier mark as pronounced in the different languages of the relevant territory (e.g. 'twenty-four', in English, or 'veinticuatro', in Spanish) and ‘Metal’ in the contested sign.

Therefore, and taking into account the conclusions regarding the distinctiveness of the elements, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in an element of very limited distinctiveness, namely ‘Scout’, and the differentiating elements, the number ‘24’ in the earlier sign and ‘Metal’ in the contested mark, convey different concepts.

Therefore, the coincidence in the element ´Scout´ cannot lead to more than a low degree of similarity.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant services in Class 35.

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).

In the present case, the services at issue are identical and are directed at business customers with specific professional knowledge or expertise with a higher than average degree of attention.

As indicated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low in relation to the relevant services from the perspective of the public in the relevant territory.

Signs that have low intrinsic distinctive character in relation to the services they cover should not be protected beyond what is compatible with the possibility for all to use signs that are necessary to describe the services that are legitimately traded by competitors. A company is certainly free to choose a mark with low distinctive character, including trade marks with descriptive words, and use it in the market. However, in so doing, it also has to accept that competitors are equally entitled to use trade marks with similar or identical descriptive components. The Court of Justice has consistently held that there may be a public interest in not monopolising certain signs, in particular to protect competitors or consumers with regard to signs lacking any distinctive character, or being exclusively descriptive of the goods and services (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230; 06/05/2003, C-104/01, Libertel, EU:C:2003:244, in conjunction with 23/05/2012, R 1790/2011-5, 4refuel (fig. mark)/Refuel).

In the present case, the signs are similar to a low degree in that they have in common the word ‘Scout’, which is of very limited distinctiveness for the services at issue. Therefore, the differentiating elements (‘24’/’Metal’) are of particular relevance, especially as they also lead the signs to differ in their beginnings. In particular, the word ‘Metal’ in contested sign which is not less distinctive than the coinciding element clearly contributes to differentiating the marks. These differences are all clearly perceptible and the relevant attentive professional public will have no difficulties in distinguishing one mark from the other.

The opponent also based its opposition on the following European Union earlier trade mark registrations:

• No 13 636 832 for the figurative mark , for services in Classes 35, 36, 38, 39, 41, 42, 45.

• No 13 636 873 for the figurative mark , for services in Classes 35, 36, 38, 39, 41, 42, 45.

• No 13 636 857 for the figurative mark , for services in Classes 35, 36, 38, 39, 41, 42, 45.

• No 13 636 816 for the figurative mark , for goods in services in Classes 35, 36, 38, 39, 41, 42, 45.

The opponent argues that the earlier trade marks, all characterised by the presence of the same word components, ‘Scout’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it actually uses a family of ‘Scout’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark and therefore, the opponent’s argument has to be set aside.

Taking into account all the above, the Opposition Division considers that, despite the identity between the services at issue, the similarities between the signs, limited to the coincidence in an element with very limited distinctive character (‘Scout’), are not sufficient to lead to a likelihood of confusion or association on the part of the public.

Therefore, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

As indicated above, the opponent also based its opposition on the aforementioned earlier European Union trade mark registrations.

These earlier rights invoked by the opponent are even less similar to the contested mark than the earlier mark analysed above. This is because they contain further figurative elements and additional words such as ‘FINANCE’, ‘JOB’, ‘TRAVEL’ or ‘FRIEND’ which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; 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.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Sofía Modesta SACRISTÁN MARTÍNEZ

Martina GALLE

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.