OPPOSITION No B 3 065 640

Doksanalti Tekstil Anonim Sirketi, Ehlibeyt Mahallesi Tekstilciler Caddesi Nº:17A/44-45-45-47, null, Çankaya, Ankara, Turkey (opponent), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Climate-KIC Holding B.V., FAO The Company Secretary, 21 Great Winchester Street

EC2N 2JA, London, United Kingdom (applicant), represented by Turnstone B.V., Prof. J.H. Bavincklaan 2, 1183 AT Amstelveen, Netherlands (professional representative).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 640 is upheld for all the contested services, namely

Class 35: Business consultancy and assistance to students, young entrepreneurs, start-up companies, early stage companies, and companies having a focus on innovative technologies or business models; organization of exhibitions for commercial and/or advertising purposes; public relations; business management; organization consultancy; business information; business research; business inquiries; appraisal of business opportunities; business development services and business consultancy to companies provide by experienced advisors; arranging business and commercial opportunity introductory services; business networking services; commercial mediation services in connection with the exchange and promotion of knowledge between companies, academia, governments and organizations; provision of business information and business support services; marketing studies; market research and market analysis services; data compilation and retrieval; commercial information agencies; advisory, consultancy and information services relating to all of the aforesaid services; none of the aforementioned services relating to fashion.

2. European Union trade mark application No 17 881 803 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 881 803 ‘JOURNEY’ (word), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 11 027 505 . 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.

a) The services

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

Class 35: Advertising; Business management; Business administration; Office functions; Accounting; Accounts (Drawing up of statements of -); Administrative processing of purchase orders; Advertising by mail order; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Auctioneering; Auditing; Bill-posting; Business appraisals; Business consultancy (Professional -); Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Commercial or industrial management assistance; Compilation of information into computer databases; Compilation of statistics; Cost price analysis; Data search in computer files for others; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Economic forecasting; Efficiency experts; Employment agencies; Fashion shows for promotional purposes (Organization of -); File management (Computerized -); Import-export agencies; Invoicing; Layout services for advertising purposes; Management (Advisory services for business -); Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; Office machines and equipment rental; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services [business assistance]; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Price comparison services; Procurement services for others [purchasing goods and services for other businesses]; Production of advertising films; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Rental of photocopying machines; Rental of vending machines; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; Word processing; Writing of publicity texts; Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; import and export agencies; business investigations, evaluations, expert appraisals, market analysis services relating to the availability and sale of goods; commercial information services; market research; conducting marketing studies and analysis of market studies; provision of market research information; auctioneering; the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

After the limitation of the scope of protection by the applicant on 10/10/2018, the contested services are the following:

Class 35: Business consultancy and assistance to students, young entrepreneurs, start-up companies, early stage companies, and companies having a focus on innovative technologies or business models; organization of exhibitions for commercial and/or advertising purposes; public relations; business management; organization consultancy; business information; business research; business inquiries; appraisal of business opportunities; business development services and business consultancy to companies provide by experienced advisors; arranging business and commercial opportunity introductory services; business networking services; commercial mediation services in connection with the exchange and promotion of knowledge between companies, academia, governments and organizations; provision of business information and business support services; marketing studies; market research and market analysis services; data compilation and retrieval; commercial information agencies; advisory, consultancy and information services relating to all of the aforesaid services; none of the aforementioned services relating to fashion.

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 services

The contested business consultancy and assistance to students, young entrepreneurs, start-up companies, early stage companies, and companies having a focus on innovative technologies or business models; business management; organization consultancy; business information; business research; business inquiries; appraisal of business opportunities; business development services and business consultancy to companies provide by experienced advisors; arranging business and commercial opportunity introductory services; business networking services; commercial mediation services in connection with the exchange and promotion of knowledge between companies, academia, governments and organizations; provision of business information and business support services; commercial information agencies; advisory, consultancy and information services relating to all of the aforesaid services; none of the aforementioned services relating to fashion are various services rendered by specialist companies such as business consultants. They are at least similar, if not identical, to the opponent’s business management; business appraisals; business consultancy (professional -); business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; commercial information services. The services have the same purpose of providing tools and expertise to enable customers to carry out their business or providing businesses with the necessary support to acquire, develop and expand market share. The services are provided by the same business consultants, they are directed at the same consumers and have the same distribution channels.

The contested organization of exhibitions for commercial and/or advertising purposes; public relations; marketing studies; market research and market analysis services; advisory, consultancy and information services relating to all of the aforesaid services; none of the aforementioned services relating to fashion are at least similar, if not identical, to the opponent’s organization of trade fairs for commercial or advertising purposes; public relations; marketing studies; market research; market analysis services relating to the availability and sale of goods. They have the same natures and purposes. They are directed at the same consumers and have the same distribution channels. They come from the same providers.

The contested data compilation and retrieval; advisory, consultancy and information services relating to all of the aforesaid services; none of the aforementioned services relating to fashion are at least similar, if not identical, to the opponent’s office functions. They have the same purposes, relevant public and distribution channels. They come from the same providers.

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 at least similar are directed at business customers with specific professional knowledge or expertise.

Since the services at issue are specialised services that may have important financial consequences for the customers’ business, the consumers’ level of attention would be rather high when choosing them.

c) The signs

	JOURNEY
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 element ‘JOURNEY’ will be understood by English-speaking part of the relevant public as trip. As it is not descriptive, allusive, laudatory or otherwise weak for the services at hand, it is considered distinctive (also for the part of the relevant public for which it is meaningless).

The earlier sign is a figurative mark containing elements ‘1996’ and ‘JOURNEY’. The element ‘1996’ is visually eye-catching, however, since it will be merely perceived as a reference to the year it cannot be considered to have more impact on consumers than the distinctive word ‘JOURNEY’. Despite its smaller size within the sign, the word ‘JOURNEY’ is not considered negligible and it will definitely not be overlooked by the relevant public.

Visually, the signs coincide in the distinctive word ‘JOURNEY’ which is the only element of the contested sign, and the element which plays an independent distinctive role in the earlier sign. The signs differ in ‘1996’ and the stylisation of the earlier sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs fully coincides in the sound of the distinctive element ‘JOURNEY’, which is the contested sign’s sole and complete element. The pronunciation differs in the sound of the element ‘1996’ of the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘JOURNEY’, included in both signs, will be associated with the meaning explained above and is considered distinctive. To that extent, the signs are conceptually similar to an average degree.

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

It has been established in the previous sections of the decision that the services are at least similar. The earlier mark has normal distinctiveness.

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, phonetic 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" (see judgment of 11 /11/1997, C-251/95, Sabel).

In spite of the differences in the word element ‘1996’ and the figurative representation of the earlier sign, there is a likelihood of confusion because the marks are overall similar to an average degree. The similarity lies in the distinctive word ‘JOURNEY’ which is the only element of the contested sign and plays an independent distinctive role in the earlier sign.

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 European Union trade mark registration No 11 027 505. It follows that the contested trade mark must be rejected for all the contested 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 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

Katarzyna ZANIECKA

Anna BAKALARZ

Christian STEUDTNER

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.