OPPOSITION No B 3 059 382

Harmonie Mutuelle, 143, rue Blomet, 75015 Paris, France (opponent), represented by Cabinet Le Guen Maillet, 3 Impasse de la Vigie, CS 71840, 35418 Saint-Malo Cedex, France (professional representative)

a g a i n s t

Menacshe Chepkemboi Stempfle, Josef-Mohr-Weg 40, 81735 München, Germany (applicant), represented by Manitz Finsterwald Patent- Und Rechtsanwaltspartnerschaft mbB, Martin-Greif-Str. 1, 80336 München, Germany (professional representative).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 382 is upheld for all the contested services.

2. European Union trade mark application No 17 902 824 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 17 902 824 for the word mark ‘First Harmony’. The opposition is based on French trade mark registration No 4 094 274 for the word mark ‘Harmonie Conseil’. 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: Management assistance to companies, business management consultancy of insurance companies; administrative and commercial management of contracts of insurance, health insurance, provident scheme and accident risk; administrative and commercial management of complementary health; advertising service, dissemination and distribution of advertising material [leaflets, prospectuses, printed samples]; updating of advertising material, online advertising on a computer network, dissemination of advertising matter, organization of exhibitions for commercial purposes or advertising, direct mail advertising, advertising by mail order, especially in the sector of insurance, complementary heath, the health and services to individuals.

Class 41: Training and education in the field of insurance and health; organization and conducing conferences, congresses, conferences, symposia and seminars in the field of insurance and health; organization of competitions [education or entertainment] in the field of insurance and health, vocational guidance [education or training advice] in the field of insurance and health.

Class 44: Medical services; nursing medical, convalescent homes, rest homes, nursing homes, health services, psychological services, optician services, blood bank services, medical home care services, hygiene and beauty care for human being; services of medical analysis, information provided by any means of communication or telecommunication in health, including information on prevention of risks of disease and accidents; information regarding health, including making available lists of health professionals; services rendered especially at the time of a return at home after hospitalization namely gardening.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; business assistance, management and administrative services.

Class 41: Education, entertainment and sport services; coaching; instruction; seminars.

Class 44: Sports medicine services; alternative medicine services; physical therapy services; chiropractic; autogenic therapy services; fitness testing; health advice and information services; health care consultancy services [medical]; health care relating to acupuncture; health care relating to chiropraxis; health screening; herbalism; meditation services; medical and healthcare services; providing health care information by telephone; providing health information; providing information relating to acupuncture; providing information relating to chiropractics; providing information relating to traditional Japanese massage; reiki services; physiotherapy.

The Opposition Division finds it appropriate to highlight that the comparison of the services must be based on the wording indicated in the respective lists of services. Any actual or intended use not stipulated in the list of services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s argument explaining that the opponent and her activities are different is irrelevant.

Contested services in Class 35

The contested advertising, marketing and promotional services at least overlap with the opponent’s advertising service, dissemination and distribution of advertising material [leaflets, prospectuses, printed samples]. Therefore, they are identical.

The contested business assistance, management services at least overlap with the opponent’s management assistance to companies, business management consultancy of insurance companies. Therefore, they are identical.

The contested business administrative services at least overlap with the opponent’s administrative and commercial management of complementary health. Therefore, they are identical.

Contested services in Class 41

The contested education services; instruction overlap with the opponent’s training and education in the field of insurance and health. Therefore, they are identical.

The contested entertainment services overlap with the opponent’s organization of competitions (education or entertainment) in the field of insurance and health. Therefore, they are identical.

The contested sport services overlap with the opponent’s organization of competitions (education or entertainment) in the field of health that covers sport competitions organised in the field of health. Therefore, they are identical.

The contested coaching services include or at least overlap with the opponent’s vocational guidance [education or training advice] in the field of insurance and health. Therefore, they are identical.

The contested seminars include or overlap with the opponent’s organization and conducing seminars in the field of insurance and health. Therefore, they are identical.

Contested services in Class 44

The contested sports medicine services; alternative medicine services; physical therapy services; chiropractic; autogenic therapy services; fitness testing; health advice and information services; health care consultancy services [medical]; health care relating to acupuncture; health care relating to chiropraxis; health screening; herbalism; meditation services; medical and healthcare services; providing health care information by telephone; providing health information; providing information relating to acupuncture; providing information relating to chiropractics; providing information relating to traditional Japanese massage; reiki services; physiotherapy are identical to the opponent’s medical services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 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. For instance, for services in Class 35, the degree of attention is high because it has an influence on the consumers’ business. In addition, for services in Class 44 the degree of attention will be high because it has an impact on the consumers’ health.

c) The signs

Harmonie Conseil	First Harmony
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both signs are word marks, the earlier mark is a sign composed of French words, whereas the contested sign is composed of English words.

The word ‘harmonie’ in the earlier mark will be perceived by the relevant public as referring to the quality of forming a pleasing and consistent whole. The second element ‘Conseil’ means ‘advice’ in French. This element will be perceived as a description of the activity of the company, meaning that they provide advice to their customers. Therefore, this element, in particular concerning services is non-distinctive. Although the word ‘harmonie’ is meaningful and may allude to some characteristics of the services, namely that they contribute to the harmony of the human body, or that they produce an harmonious effect, the word does not have any direct meaning for the relevant services and therefore has an average degree of distinctiveness or at least, is the most distinctive element of the earlier mark.

The element ‘First’, of the contested sign, is a basic English word and will be understood by the relevant public meaning initial, leading, the best, number one. This element has a laudatory character and is, therefore, weak. The word ‘harmony’ of the contested sign will be perceived as the English word or a misspelling of the French word ‘harmonie’, therefore, this element is distinctive or is at least, the most distinctive element of the contested sign.

The applicant claims that the word ‘harmony’ is very weak, and refers to previous national decisions to support her arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they emanate from the German Court, whereas the relevant public here is French.

Visually, the signs coincide in the string of letters ‘HARMON’, which constitutes the main part of the most distinctive element of both. However, the signs differ in the last letters of this element, ‘IE’ or ‘Y’, and in their additional element ‘Conseil’ and ‘First’, of the earlier mark and the contested sign respectively. As the differences lie in the less distinctive elements and in the endings of the most distinctive elements, the impact of these differences is reduced. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in /(h)armonie(y)/ as, contrary to the applicant’s explanation, the letters ‘IE’ and ‘Y’ have an identical pronunciation in French. The pronunciation differs because of the additional elements ‘Conseil’ and ‘First’, which are non-distinctive or weak. Therefore, as the most distinctive element of both signs will be pronounced identically, they are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same meaning and have additional differing meanings conveyed by weak elements. As concepts conveyed by weak or non-distinctive elements have a limited influence in the conceptual comparison, the signs are conceptually highly similar.

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

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. They target the public at large and business customers. The degree of attention varies from average to high.

The signs are visually similar to an average degree, whereas they are aurally and conceptually similar to a high degree. The earlier mark is distinctive to a normal degree.

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).

Moreover, it is consistent case-law that, when the services covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53). Here, the most distinctive and independent element of both signs is almost identical, therefore, the differences between the signs are clearly not enough to exclude a likelihood of confusion.

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 French trade mark registration No 4 094 274. 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, she 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, 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

Vita VORONECKAITE

Cindy BAREL

Vít MAHELKA

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.