OPPOSITION No B 3 064 595

Estelle Metayer Strategies Inc., 440, rue Laurier Ouest Bureau 200, K1R 7X6, Ottawa, Ontario, Canada (opponent), represented by Cabinet Flechner, 22 avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Comperia.pl Spółka Akcyjna, ul. Konstruktorska 13, 02‑673 Warszawa, Poland (applicant) represented by Andrzej Bednarczyk, Ul. Okrężna 7, 07‑300 Ostrów Mazowiecka, Poland (professional representative).

On 06/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 595 is partially upheld, namely for all the contested services with the exception of:

Class 35: Rental of vending machines.

2. European Union trade mark application No 17 880 122 is rejected for all the contested services with the exception of rental of vending machines, for which it may proceed to registration. It may also proceed for the non-contested services in Class 36.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 880 122 ‘COMPERIA’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 8 334 203 ‘COMPETIA’. 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.

1. The services

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

Class 35 : Business services, namely: business consultation services in the field of process reengineering and facilitation of strategic planning and governance process; conducting business and market research surveys; business marketing consulting services; conducting business research and surveys with respect to companies profiling and industry profiling, analysis of future entrants, market analysis and competitive analysis; new market entry strategy; wholesale and retail store services and on-line wholesale and retail store services in the field of books.

Class 38: Electronic services, namely: electronic portal and online community providing multiple user access to a global computer information network for the transfer and dissemination of a wide range of information, ranging from market analysis, corporate governance, resources and tools, templates, products, consulting services (on and off-line) and business networking opportunities; internet bookmarks.

Class 41: Arranging and conducting conferences; conducting workshops and seminars in the field of strategy, competitive intelligence and analytical frameworks.

The contested services are the following:

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; auctioneering services; rental of vending machines; subscriptions to telecommunications database services; retail services connected with the sale of furniture; retail services in relation to pushchairs; retail services in relation to kitchen appliances; retail services in relation to gardening products; retail services in relation to bicycle accessories; retail services in relation to car accessories; retail services relating to food; retail services in relation to bakery products; retail services relating to horticultural products; retail services for works of art provided by art galleries; retail services in relation to fashion accessories; retail services in relation to pet products; retail services in relation to computer software; retail services in relation to domestic electrical equipment; retail services in relation to domestic electronic equipment; online retail services for downloadable and pre-recorded music and movies; online retail services for downloadable digital music; online retail services for downloadable ring tones; retail services relating to kitchen knives; shop retail services connected with carpets; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; online retail store services relating to clothing; online retail store services relating to cosmetic and beauty products; retail services in relation to headgear; retail services connected with stationery; retail services in relation to building materials; retail services in relation to smartphones; retail services relating to fake furs; retail services in relation to wearable computers; retail services relating to alcoholic beverages; retail services in relation to downloadable music files; retail services in relation to downloadable electronic publications; retail services relating to food preparation implements; retail services connected with the sale of pre-paid encoded cards (for others); retail services connected with the sale of subscription boxes containing chocolates; retail services connected with the sale of subscription boxes containing cosmetics; retail services connected with the sale of subscription boxes containing beers; retail services connected with the sale of subscription boxes containing food; retail services relating to audio visual equipment; retail services relating to horticultural equipment; retail services relating to fragrancing preparations; wholesale services relating to fake furs; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to metal hardware; retail services in relation to sex aids; retail services in relation to cleaning articles; retail services in relation to gardening articles; retail services in relation to jewellery; retail services in relation to printed matter; retail services in relation to teas, retail services in relation to disposable paper products.

An interpretation of the wording of the list of services is required to determine the scope of protection of these 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.

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.

The contested business analysis, research and information services include, as a broader category, the opponent’s business consultation services in the field of process reengineering and facilitation of strategic planning and governance process. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business assistance, management and administrative services include, as a broader category, the opponent’s conducting business research services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested advertising, marketing and promotional services include, as a broader category, the opponent’s business marketing consulting services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested subscriptions to telecommunications database services are similar to the opponent’s electronic portal and online community providing multiple user access to a global computer information network for the transfer and dissemination of a wide range of information in Class 38. These services are usually provided by the same companies and target the same consumers. They are typically handled by businesses specialised in telecommunication services and sold via the same channels.

The contested retail services connected with the sale of furniture; retail services in relation to pushchairs; retail services in relation to kitchen appliances; retail services in relation to gardening products; retail services in relation to bicycle accessories; retail services in relation to car accessories; retail services relating to food; retail services in relation to bakery products; retail services relating to horticultural products; retail services for works of art provided by art galleries; retail services in relation to fashion accessories; retail services in relation to pet products; retail services in relation to computer software; retail services in relation to domestic electrical equipment; retail services in relation to domestic electronic equipment; online retail services for downloadable and pre-recorded music and movies; online retail services for downloadable digital music; online retail services for downloadable ring tones; retail services relating to kitchen knives; shop retail services connected with carpets; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; online retail store services relating to clothing; online retail store services relating to cosmetic and beauty products; retail services in relation to headgear; retail services connected with stationery; retail services in relation to building materials; retail services in relation to smartphones; retail services relating to fake furs; retail services in relation to wearable computers; retail services relating to alcoholic beverages; retail services in relation to downloadable music files; retail services in relation to downloadable electronic publications; retail services relating to food preparation implements; retail services connected with the sale of pre-paid encoded cards (for others); retail services connected with the sale of subscription boxes containing chocolates; retail services connected with the sale of subscription boxes containing cosmetics; retail services connected with the sale of subscription boxes containing beers; retail services connected with the sale of subscription boxes containing food; retail services relating to audio visual equipment; retail services relating to horticultural equipment; retail services relating to fragrancing preparations; wholesale services relating to fake furs; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to metal hardware; retail services in relation to sex aids; retail services in relation to cleaning articles; retail services in relation to gardening articles; retail services in relation to jewellery; retail services in relation to printed matter; retail services in relation to teas, retail services in relation to disposable paper products are all retail and wholesale services in relation to all kind of products. They are similar to the opponent’s wholesale and retail store services and on-line wholesale and retail store services in the field of books. The services at issue have the same nature because both are retail and wholesale services. Moreover, they have the same purpose and method of use.

The contested auctioneering services are public sales at which goods are sold to the highest bidder. Similarity between these services and the retail of specific products will only be found insofar as the retail services relate to goods that are commonly sold at auctions. For this reason, the contested services coincide partially in their nature with the opponent’s retail store services and on-line wholesale and retail store services in the field of books. They target the same public, can be rendered by the same providers and are likely to be distributed through the same channels. Therefore, they are considered similar.

The contested rental of vending machines consists of renting automated machines that are used for selling items such as snacks, beverages and cigarettes. These services have nothing in common with the opponent’s business services and wholesale and retail services in Class 35 or the electronic communication services in Class 38 or the educational services in Class 41. They differ in their nature, purpose and method of use; they do not coincide in producer or end consumer and are not in competition or complementary. These services are therefore dissimilar.

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 or similar 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 services purchased.

3. The signs

COMPETIA	COMPERIA
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 a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The element ‘COMPETIA’ has a meaning in, for instance, Spanish, since it is the first or third person of the past tense of the verb ‘competir’, meaning ‘to compete’. However, in the vast majority of the EU member states, the element ‘COMPETIA’ as well as the contested sign ‘COMPERIA’ are meaningless, for example in territories such as Benelux, Bulgaria, France or Poland. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in Benelux, Bulgaria, France or Poland.

Since the signs’ verbal elements do not convey any meaning for the relevant public, they are distinctive.

Visually, the signs coincide in seven out of their eight letters, ‘COMPE*IA’. They only differ in their sixth letters, ‘T’ v ‘R’.

Therefore, the signs are visually highly similar.

Aurally, the marks will be pronounced ‘COM-PE-TIA’ and ‘COM-PE-RIA’ respectively. The similar disposition of seven identical letters out of eight will provoke a very similar pronunciation of both words.

Therefore, the marks are aurally highly similar.

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.

4. Distinctiveness of the earlier mark

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

The earlier trade mark 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

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/or 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).

The services found to be identical or similar target the public at large as well as professionals. The degree of attention varies from average to high.

The signs are visually and aurally similar to a high degree and the conceptual similarity is not relevant. The earlier mark has a normal degree of distinctiveness.

Since the signs are both composed of three syllables, two of which are identical, and the last one differs only in one letter, they create a highly similar overall impression.

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). Therefore, it is likely that consumers will not perceive the differing letters, ‘T’ v ‘R’, when they encounter the marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in Benelux, Bulgaria, France or Poland and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 334 203. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Aldo BLASI

Sylvie ALBRECHT

Victoria DAFAUCE MENÉNDEZ

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.