OPPOSITION No B 3 047 009

Jural Promotores Publicitarios S.L., C/ Eneldo 7. Urb. Alto Lazarejo, 28232, Las Rozas (Madrid), 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

Peoplerise Srl, Via San Marco 9H, 35129 Padova, Italy (applicant), represented by Giulia Sammartin, Via San Marco 9H, 35129 Padova, Italy (employee representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 009 is upheld for all the contested services.

2. European Union trade mark application No 17 572 819 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 572 819, for the figurative mark , namely against all the services in Classes 35 and 41. The opposition is based on Spanish trade mark registration No 3 634 416, for the figurative mark and Spanish trade mark registration No 3 561 699, for the figurative mark . 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 Spanish trade mark registration No 3 634 416.

a) The services

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

Class 35: Advertising; business management; business administration; arranging of commercial and business contacts; providing commercial information about business contacts; market analysis; market search; market research services relating to broadcast media; compilation and systemization into computer databases; computerized file management; transcription of communications.

Class 41: Education; providing of training; entertainment services; publication of texts other than publicity texts; publication of books; arranging and conducting of colloquiums, conferences, seminars and congresses for cultural and educational purposes; publication of electronic magazines; Providing on-line electronic publications, not downloadable; organization events for entertaining purposes; arranging of trade fairs for educational purposes; training and further training consultancy; providing information relating to sports; exercise (fitness) advisory services.

The contested services are the following:

Class 35: Business consultancy to firms.

Class 41: Training.

Contested services in Class 35

The contested business consultancy to firms is included in the broad category of business assistance, management and administrative services. Consequently, it overlaps with the opponent’s business management and business administration. Therefore, they are identical.

Contested services in Class 41

Training is identically contained in both lists of services (albeit using slightly different wordings).

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 services found to be identical are directed at the public at large (those in Class 41) and at business customers with specific professional knowledge or expertise (those in Classes 35 and 41).

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

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 earlier mark consist of the word ‘knowmads’ represented in a rather standard lowercase font in black. The letter ‘O’ is replaced by a purple circle with a white exclamation mark in it. However, the Opposition Division is of the opinion that this circle will be perceived easily as the letter ‘O’ because consumers tend to look for a meaning in trade marks, and marks often distort letters or replace them with figurative elements with a shape similar to that of a letter for effect or impact.

The contested sign consists of the term ‘knowmads’ represented in a highly stylised way. The letters are depicted in black with dots (or knots) at the end of the lines. A broken line, gradating from white to grey and black, connects the letters and some of these knots.

The knots used to enhance the stylisation of the contested sign play an ornamental role. Despite the higher stylisation and the additional figurative element (the broken line) of the contested sign it is still possible to easily recognise the letters in the verbal element and read them as the word ‘knowmads’. These figurative components and aspects of the sign are considered of weak inherent distinctiveness. The relevant public is used to encountering this kind of graphic arrangements on the marketplace, when encountering trade marks, and does not pay much attention to them, as it affords them an essentially ornamental role. Indeed, consumers normally perceive such elements as graphic embellishments of the corresponding brand and are used to refer to the respective marks by their verbal elements.

The term ‘knowmads’ has no meaning for the relevant public and is, therefore, distinctive for the goods in question.

The signs under comparison have no element that could be considered clearly more dominant than others, as a dissection in separate components is impossible.

Visually, the signs coincide in the letters ‘KN*WMADS’ identically present in both signs. However, they differ in the stylisation used, in the colours and in the figurative elements (a circle in the earlier mark vs. a broken line in the contested sign). Nevertheless, these figurative elements will not lead the consumer’s attention away from the verbal elements they embellish as the coincidence in the verbal elements outweighs the differences in the design. Although the letter ‘O’ is not present in the earlier sign, as it was mentioned above, the circle used to replace it is easily perceived as this letter due to its shape and the roundish typeface used for the rest of the letters.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KNOWMADS’, present identically in both signs

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested services have been found identical to the services of the earlier mark. They are directed at public whose degree of attention may vary from average to high.

The signs are visually similar to an average degree and aurally identical. In particular, the marks coincide in their verbal elements.

The earlier mark is inherently distinctive to a normal degree.

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. The main differences between the compared signs lie in the stylisation and the figurative elements used, which play a decorative role. Additionally, these figurative elements are not dominant and will, therefore, have a limited impact as indicators of commercial origin for the public in the relevant territory. Therefore, the Opposition Division is of the opinion that they cannot outweigh the similarities and as a result, they are not sufficient to exclude a likelihood of confusion between the marks in question. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way.

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 Spanish trade mark registration 3 634 416. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier Spanish trade mark registration 3 634 416 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Adriana Pieternella VAN ROODEN

Tzvetelina IANTCHEVA

Stanislava STOYANOVA

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.