OPPOSITION No B 3 082 696

Ecubal - Empresa Cultural de Barros Brancos, S.A., Barros Brancos, Casa S. Vicente - Porches, 8400-400 Lagoa, Portugal (opponent), represented by J. PEREIRA DA CRUZ, S.A., Rua Victor Cordon, 14, 1249-103, Lisboa, Portugal (professional representative)

a g a i n s t

No Bell Izabella Gorczyca, Mirkowska 39, 05-520 Konstancin-Jeziorna, Poland (applicant)

On 25/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 696 is partially upheld, namely for the following contested goods and services:

Class 9: All the goods for which protection is sought in this class.

Class 16: All the goods for which protection is sought in this class, except for stationery.

Class 41: All the goods for which protection is sought in this class.

Class 42: Certification of educational services.

2. European Union trade mark application No 18 019 113 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of the European Union trade mark application No 18 019 113 for the word mark ‘nobell’, namely against all the goods and services in Classes 9, 16, 28, 41 and 42. The opposition is based on European Union trade mark registration No 10 667 467 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.

a) The goods and services

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

Class 41: Education; providing of training; arranging and conducting of workshops, colloquiums, congress and conferences; correspondence courses; education information; education services; vocational guidance (education or training advice); educational course information; instruction services; arranging and conducting of symposiums; teaching; practical training (demonstration); tuition; arranging and conducting of workshops; rental of teaching materials; publication of teaching materials.

The contested goods and services are the following:

Class 9: Electronic publications, downloadable; electronic publications recorded on computer media; weekly publications downloaded in electronic form from the internet; educational mobile applications; educational computer applications; education software; children’s educational software; augmented reality software for education; training software.

Class 16: Printed publications; educational publications; periodicals; manuals for instructional purposes; educational and instructional material; stationery and educational supplies; printed training materials.

Class 28: Toys adapted for educational purposes; toys; wooden toys; smart toys; modular toys; toys, games, playthings and novelties; multi-part construction toys; electronic activity toys; smart robot toys; motor driven toy animals; electronic learning toys; electronic remote controlled toys; clockwork toys [of plastics]; toys sold in kit form; interlocking toy construction pieces; toy building blocks capable of interconnection; craft toys sold in kit form; play apparatus for use in children’s nurseries.

Class 41: Training; pre-school education; tuition in sports; adult training; language tuition; vocational training services; nursery schools; team building (education); career counseling [education]; academies [education]; organisation of examinations [educational]; educational services provided by schools; symposiums relating to education; vocational education for young people; summer camps [entertainment and education]; organisation of seminars relating to education; play schemes [entertainment/education]; educational instruction; educational seminars; business training services; educational advisory services; publication of instructional literature; publication of educational texts; publication of educational books; organising of educational lectures; developing educational manuals; organisation of symposia relating to education; arrangement of conferences for educational purposes; dissemination of educational material; setting of educational standards; provision of educational examinations; advisory services relating to education; management of education services; organising of competitions for education; organising of education exhibitions; issuing of educational awards; education, entertainment and sports; educational services relating to management; provision of training and education; production of educational television programmes; publication of educational teaching materials; workshops for educational purposes; organising of meetings in the field of education; musical education services; organization of competitions [education or entertainment]; educational services provided for children; educating at senior high schools; education services related to the arts; educational services relating to dancing; education services relating to painting; educational services provided by universities; conducting of educational courses relating to business; management education services; education services relating to conservation; arranging of competitions for educational purposes; production of films for educational purposes; education and training consultancy; educational and teaching services; secondary school educational services; educational services in the nature of correspondence schools; educational services for the dramatic arts; career advisory services (education or training advice); education services relating to vocational training; education services relating to customer satisfaction; education services relating to business training; education services provided by television; educational services provided for teachers of children; educational services relating to the writing of computer programs; educational services relating to sales training; educational services provided by colleges; production of educational sound and video recordings; conducting educational workshops in the field of business; education services provided by television programmes; educational services relating to the teaching of foreign languages; training or education services in the field of life coaching; career counselling and coaching; production of live television programmes for education; provision of educational entertainment services for children in after school centers; consultancy services relating to the education and training of management and of personnel; conducting of instructional, educational and training courses for young people and adults; providing facilities for movies, shows, plays, music or educational training; organisation of training; personnel training; computer training; training of teachers; advanced training; sports training; provision of training courses; organising of commercial training; organising of business training; provision of online training; conducting workshops [training]; staff training services; education and instruction; personal coaching [training]; production of training films; publication of training manuals; arranging of training courses; consultancy services relating to training; training relating to sales; training in the field of design; coaching relating to finance; training services relating to speech; workshops for training purposes; occupationally orientated instruction; training in public relations; training relating to employment skills; arranging and conducting of workshops [training]; tuition in physical fitness; teacher training services; training services relating to finance; management training consultancy services; courses (training -) relating to management; courses (training -) relating to finance; instruction courses relating to physical fitness; sales training services; training in business management; organisation of conferences relating to vocational training; provision of training courses in personal development; training services in the field of project management; industrial relations training; conducting of educational courses relating to business management; provision of training courses for young people in preparation for careers.

Class 42: Certification of educational services; toy design.

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 goods in Class 9

Electronic publications, downloadable; electronic publications recorded on computer media; weekly publications downloaded in electronic form from the internet are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers. It is becoming common to distribute books, magazines and newspapers to consumers through tablet-reading devices in the form of electronic publications. Consequently, materials, such as these, can have an intended purpose of education and therefore are essential to educational services. Therefore, these goods and services are complementary. This is because, in order to supply educational services, it is both helpful and usual to use the mentioned goods. Service providers offering any kind of course often hand out these goods to participants as learning supports. Therefore, they are similar.

This is even more so for the remaining contested goods as they are clearly indicated as for education and training purposes. Therefore, they are also similar to the opponent’s educational services.

Contested goods in Class 16

The contested goods are mainly publications and different type of printing materials that are essential and therefore complementary to the opponent’s education services. This is because, in order to supply education services, it is both helpful and usual to use educational and instructional material, as well as printed publications; educational publications; periodicals; manuals for instructional purposes; educational supplies; printed training materials. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the opponent’s goods and the contested services as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

The contested stationery is dissimilar to all opponent’s services. These goods and services have a different nature and purpose. Although they may target the same audience, they are usually produced by different undertakings. They are neither in competition nor complementary. Although some schools may supply stationery items, this is the exception rather than the rule and it is usually for promotional purposes and not in order to establish a position in the market for stationery provided by the educational establishment.

Contested goods in Class 28

The contested goods are provided by specialised shops or in separate sections of big stores. Although toys can be adapted for educational purposes their main function is to entertain. Therefore, they are not teaching materials. The goods and services have a different nature and are neither complementary nor in competition. The fact that toys can be used in an educational process do not make them complementary to the services. Moreover, their producer/provider is usually different, as different know-how for providing them is needed. Therefore, the contested goods are dissimilar to all opponent’s services.

Contested services in Class 41

The contested entertainment and sports are similar to the opponent’s education. Education includes, along with formal schooling, the organisation of educational activities for the dissemination of knowledge, skills and attitudes — which are the elements they have in common with certain entertainment and sport services. These services may have the same purpose. They may coincide in providers, relevant public and distribution channels. Therefore, they are similar.

All the remaining contested services can be divided into categories of services belonging to the market sector of education, training, the organisation of events related to education such as seminars, academies or schools. Furthermore, the contested services encompass advisory services in the field of career and/or education, production of educational programs and materials, sport and entertainment services. The opponent’s services cover activities belonging to the same sectors of education; providing of training; arranging and conducting of workshops, colloquiums, congress and conferences; practical training (demonstration). Even if it cannot be excluded that some of the contested services would coincide in numerous relevant criteria, such as their nature, purpose, method of use, their complementarity, whether they are competing services or that they are even identical, these services clearly belong to one homogeneous market sector and for the majority of them they are — at least — offered by the same companies, target the same end user and are sold through the same distribution channels. Therefore, it follows that all the contested services are at least similar to the opponent’s services.

Contested services in Class 42

The contested certification of educational services is at least similar to a low degree to the opponent’s education information. It is not uncommon for the providers of the contested services to provide education information as well. These services may have the same relevant public and distribution channels.

The contested toy design has a main goal of the creation of designs for toys, while the goals of the opponent’s services are to educate and teach or to organise events, provide information or create visual content (e.g. production of training films) in relation to education and teaching needs. The relevant public of the contested services are businesses that need design services for the toys that they produce, while the relevant public of the opponent’s services are usually people or organisations that want to enhanced their knowledge in some areas or need information and advice in relation to education and teaching. Therefore, the intended purpose, relevant public and distribution channels of the opponent’s services are different from those of the contested services. Moreover, they are neither in competition nor complementary. Therefore, the contested services are dissimilar to all the opponent’s 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 goods and services found to be identical or similar to varying degrees are directed at the public at large and at professional customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	nobell
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 an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the public, as the verbal element ‘EDUCATION NETWORK’ of the earlier mark will have a meaning for these consumers.

The earlier mark is a figurative mark composed of the verbal elements ‘NOBEL’ and ‘EDUCATION NETWORK’, depicted in a rather standard golden typeface, and the figurative element of a highly stylised flower.

The verbal element ‘EDUCATION NETWORK’ is of a descriptive character, as it indicates that the provided services are for educational purposes and that they are organised through a network. In addition, as it is at the bottom of the sign and in a significantly smaller typeface than the preceding verbal element ‘NOBEL’, the verbal element ‘EDUCATION NETWORK’ clearly has a secondary role in the overall impression of the earlier mark.

The verbal element ‘NOBEL’ will be understood in the relevant territory as referring, in particular, to ‘the surname of the famous Swedish chemist and philanthropist, Alfred Bernhard Nobel (1833-1896), founder of the prizes that bear his name’. Although part of the public could perceive this element as indicating the quality of the services, namely that they provide knowledge and training as to win a Nobel Prize, such an association requires several mental steps and therefore it does not affect the distinctiveness of the element ‘NOBEL’, which is average.

The figurative element of the earlier mark, as a result of its size, its position at the top of the sign, and having the same colour as the verbal elements, is visually easily perceptible and clearly helps to establish the image of the earlier mark that the relevant public will retain in mind. Consequently, considering that the verbal element ‘EDUCATION NETWORK’ is of secondary importance, the figurative element and the verbal element ‘NOBEL’ are co-dominant in the earlier mark. As the figurative element does not describe any characteristic of the services in question, its distinctiveness is average.

Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the case of a composite mark, the figurative element may rank equally with the verbal element (12/11/2015, T‑450/13, WISENT VODKA / ŻUBRÓWKA et al., EU:T:2015:841, § 74). Even if the figurative element is distinctive, the public will use the verbal element ‘NOBEL’ to refer to the earlier mark.

The contested sign is the single-word mark ‘nobell’. Although it is only depicted in lower-case letters and contains one additional letter ‘l’ at its end, than the name/word ‘NOBEL’, it is inevitable that a significant part of the public will connect the verbal element ‘nobell’ with the meaning of ‘NOBEL’. Moreover, it cannot be excluded that the public may not be certain about the exact spelling of the word. All arguments for the distinctiveness of the verbal element ‘NOBEL’ of the earlier mark are also accurate for the verbal element ‘nobell’ of the contested sign in relation to the goods and services in question. Therefore, the verbal element ‘nobell’ is of average distinctiveness.

Visually, the signs coincide in the letters ‘NOBEL’, notwithstanding the colour and the different letter case used in both signs. It constitutes the entire co-dominant verbal element of the earlier mark and almost the entire and only element of the contested sign. The difference is only in the second letter ‘l’ at the end of the contested sign.

The minor difference would not be discernible except upon a very close analysis of the marks side by side. However, this is not to be expected given the goods under consideration and the public’s average degree of attention.

However, the signs also differ in the figurative element of the earlier mark, but this cannot be attributed more weight than the distinctive and clearly legible verbal element ‘NOBEL’. The figurative element will not divert the consumers’ attention away from the verbal element.

The remaining element ‘EDUCATION NETWORK’ of the earlier mark is of secondary importance and non-distinctive, as it is descriptive.

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

Aurally, considering the usual English pronunciation of the relevant letters, the contested sign and the verbal element ‘NOBEL’ of the earlier mark will be pronounced identically. The verbal element ‘NOBEL’ is the only element of the earlier mark that will be pronounced, because the figurative elements are not subject to a phonetic assessment and the other verbal element in the earlier mark is of secondary role and non-distinctive.

Therefore, the signs are aurally identical.

Conceptually, the public will perceive both signs as sharing the same concepts in the verbal elements ‘NOBEL’ and ‘nobell’, for the reasons explained above. The earlier mark also conveys the concept of a flower, which has no counterpart in the contested sign. The remaining verbal element of the earlier mark is non-distinctive. Therefore, the signs are conceptually similar to a high 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

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).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public, the public at large and professionals, varies from average to above average. The distinctiveness of the earlier mark is normal, despite the presence of a non-distinctive element.

The signs are visually similar to an average degree, aurally identical and conceptually similar to a high degree since they coincide in the verbal element ‘NOBEL’, which is the distinctive and co-dominant element of the earlier mark and constitutes almost the entire contested sign. The contested sign differs from the element ‘NOBEL’ of the earlier mark in the fact that it has an additional second letter ‘l’. As follows from settled case-law, the public pay less attention to the endings of signs (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65). Therefore, consumers, who must trust in their imperfect recollection of the signs, may easily overlook the difference located at the end.

While the other differences between the signs will not be overlooked, they are confined to the non-distinctive element ‘EDUCATION NETWORK’, being of secondary importance, and to the figurative element, which although co-dominant and distinctive will not be used and remembered by the relevant public as a reference to the earlier mark. Therefore, the public is likely to focus more attention on the distinctive verbal element ‘NOBEL’ and consider it the main indicator of commercial origin of the earlier mark. Consequently, the differences between the signs are not enough to outweigh their similarities.

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, applying the principle of interdependence, it is considered that the low degree of similarity between some of the services is offset by the higher degree of similarity between the signs.

On account of the similarities between the signs, the relevant public is likely to believe that the goods and services in question found identical or similar (even those to a low degree) originate from the same undertaking or from economically linked undertakings, despite the higher than average degree of attention that some consumers can pay in relation to some of the goods or services in question.

It follows, that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and 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 goods 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Francesca CANGERI

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.