OPPOSITION No B 3 066 053

Pavis GmbH, Gautinger Strasse 10, 82319 Starnberg, Germany (opponent), represented by Boeters & Lieck, Oberanger 32, 80331 München, Germany (professional representative)

a g a i n s t

Addactis Worldwide, Avenue Paul-Henri Spaak 17, 1060 Saint-Gilles, Belgium (applicant), represented by Lambert & Associes, 18 avenue de l’Opera, 75001 Paris, France (professional representative).

On 22/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 053 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 914 821 for the word mark ‘PEERVIZ’, namely against some of the services in Classes 35 and 36. The opposition is based on European Union trade mark registration No 1 997 527 for the word mark ‘PAVIS’ and the German company name ‘PAVIS’. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 goods and services

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

Class 9: Computer programs and program systems; machine readable data collections; machine readable data carriers (blank or prerecorded).

Class 35: Management consulting, organization consulting; personnel management consulting; personnel and employment agencies, also via computer networks; operation of offices for others, accounting, office functions; negotiations and settlement of commercial transactions for others, also via computer networks; procurement of contracts for the purchase and sale of goods, also via computer networks; procurement of contracts for the purchase and sale of industrial property rights, also via computer networks; data base services, namely compilation of information and storage in data base for retrieval purposes; data processing and data management for others, also via computer networks.

Class 36: Monetary affairs, also via computer networks; insurance brokerage, also via computer networks; payment of official fees for third parties, also via computer networks; agency for and procurement of public development funds, also via computer networks.

Class 41: Education, educational guidance, instructing and teaching; organization of conferences, conventions, seminars and symposiums; issuing and publication of books, magazines and newspapers; issuing and publication of musical, linguistic and/or pictorial works capable of being reproduced electronically, also via computer networks; issuing and publication of data collections capable of being reproduced electronically, also via computer networks; issuing of information regarding industrial property via computer networks; organisation as to contents of a virtual discussion platform regarding industrial property on computer networks.

Class 42: Language and translation services, also via computer networks; legal services, legal searches; provision of legal documentation in the field of industrial property; technical consultation and surveying, technical searches; design, preparation and maintenance of computer programs; grant for use of computer programs, also computer network; providing access to computer data bases, also via computer networks; provision of computer resources, especially in computer networks; monitoring, administration and maintenance of industrial property rights for third parties; searches for industrial property rights.

The contested services are the following:

Class 35: Collection of data; data processing; data transcription; data processing for businesses; business data analytics; data searches in computerised files for others; systematization of information into computer databases; compilation of information into computer databases; computerized file management.

Class 36: Banking; financial affairs; computerised financial data services.

Contested services in Class 35

The contested collection of data; data processing; data transcription; data processing for businesses; data searches in computerised files for others; systematization of information into computer databases; compilation of information into computer databases; computerized file management are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested business data analytics are included in the broad category of the opponent’s management consulting. Therefore, they are identical.

Contested services in Class 36

The contested banking; financial affairs; computerised financial data services are included in the broad category of, or overlap with, the opponent’s monetary affairs, also via computer networks. Therefore, they are identical.

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 partly directed at the professional public (Class 35) and partly at both the public at large and at a professional public with specific professional knowledge or expertise (Class 36).

The degree of attention for the services in Class 35 will be above average as business interests are involved and the services in Class 36 are specialised services that may have important financial consequences for their users, therefore, the consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

PAVIS	PEERVIZ
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).

Although part of the relevant public might attribute a meaning to the earlier mark, for example, ‘a large square shield developed in the 15^th century’ (information extracted from Collins Dictionary on 19/006/2020 at https://www.collinsdictionary.com/dictionary/english/pavis), the majority of the relevant public will perceive it as meaningless. In any case, the earlier mark has a normal degree of distinctiveness in relation to the relevant services.

The contested sign will be perceived by the majority of the relevant public as a meaningless word with a normal degree of distinctiveness in relation to the relevant services. However, as the relevant public has a tendency to look for a meaning in marks, it cannot be excluded that the part of the public that is familiar with English might dissect the contested sign and understand ‘peer’ as meaning ‘people who are the same age or have the same status’ (information extracted from Collins Dictionary on 19/06/2020 at https://www.collinsdictionary.com/dictionary/english/peer). This has a rather low distinctive character for some of the services, since they might be performed by or for peers.

Visually and aurally, the signs coincide in the letters and sounds ‘P’ and ‘VI’, irrespective of the different pronunciation rules in different parts of the relevant territory. However, they differ in the letters and sounds ‘*A**S’ in the earlier mark (although part of the relevant public might not pronounce the last letter ‘S’) and in the letters and sounds ‘*EER**Z’ of the contested sign. For example, in English, ‘PAVIS’ could be pronounced as either /peɪviz/ or /pavis/, whilst ‘PEERVIZ’ would be pronounced /pɪərviz/. Although the letters ‘A’ versus ‘EER’ create a clear phonetic difference between the signs in all languages, the last letters ‘S’ in the earlier mark and ‘Z’ in the contested sign might be pronounced by a part of the relevant public in a very similar or nearly identical way (e.g. in German or English). However, as those letters are at the end of the signs, they will have less impact, as the relevant public will focus more on the differences at the beginnings of the signs.

Therefore, the signs are visually similar to a very low degree and aurally similar to a low degree.

Conceptually, for the majority of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

For the remaining part of the relevant public that might perceive the earlier mark and/or the contested sign with a specific meaning, the signs are conceptually not 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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted within the substantiation period the following evidence:

 

From this information, it can be inferred that the earlier mark ‘PAVIS’ is used for various services related to the management of industrial property rights. However, although this evidence states that the opponent has been one of the leading providers in this field for over 35 years, this information is not only very limited (13 pages), but also originates from the opponent itself and is not corroborated by independent or third party evidence.

Therefore, having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 goods and 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark has an average degree of distinctiveness and not an enhanced degree of distinctiveness as claimed by the opponent. The relevant public is the public at large and a professional public, the degree of attention is above average.

The services are identical.

The signs are visually similar to a very low degree and aurally similar to a low degree. Conceptually, the assessment remains neutral for part of the relevant public, while for another part of the relevant public the signs are conceptually not similar.

Taking into account all relevant factors, it is considered that the differences between the signs are sufficient to counteract their similarities so that the relevant public will be able to distinguish between the signs, especially taking into account that the degree of attention is above average.

Considering all the above, even taking into account that the relevant services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based the opposition on the German company name ‘PAVIS’.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked, namely a German company name.

At the filing of the opposition, the opponent merely stated the following:

The opponent did not submit the exact name, number and date of the ‘German Trade Mark Act’ invoked, nor the specific content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in Germany.

The opponent did not submit the relevant legal texts, nor the necessary translations.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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, 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.

The Opposition Division

Marzena MACIAK

Saida CRABBE

Chantal VAN RIEL

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.