OPPOSITION No B 2 771 601

U. College Of New Technologies S.L., Av. Francesc Macia, 65, 17190, Salt, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Pivotal Innovations (UK) Limited, Level 39 Technology Accelerator at Canary Wharf, One Canada Square, London, E14 5AB, United Kingdom (holder).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 601 is upheld for all the contested services, namely:

Class 41:        Education; provision of training; arranging conferences, workshops, colloquiums, symposiums and seminars; information, advisory and consultancy services relating to the aforementioned services.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; expert opinion relating to technology; professional consultancy relating to technology; professional consultancy relating to technology exploitation; development of new technology for others; technological research; research and development services; technological advisory services; advisory services relating to technological research; information, advisory and consultancy services relating to the aforementioned services.

2.        International registration No 1 279 452 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of international registration designating the European Union No 1 279 452, for the word mark ‘ENTIQ’, namely against all the services in Classes 41 and 42. The opposition is based on, inter alia, European Union trade mark registration No 11 794 039, for the word mark ‘ENTI BARCELONA’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 794 039.

1. The goods and services

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

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 41:         Education; providing of training, services of schools [education], academies [education], further education, consultancy in the field of education, distance-learning courses, customised lessons (education and providing of training), vocational guidance [education or training advice], education in new interactive technologies, organisation of training courses relating to technology and innovation; entertainment, entertainment, health club services; sporting and cultural activities; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, training workshops; careers guidance (advice relating to education or providing of training), publication of texts (other than publicity texts), publication of electronic books and periodicals online, publication of books, lending libraries; educational examination.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of new technologies for others, design and development of information and communication technologies, research in the data processing technology sector, consultancy and information relating to information technology, architecture and infrastructure for information technology and computer systems integration; design and development of computer hardware and software.

The contested services are the following:

Class 41:        Education; provision of training; arranging conferences, workshops, colloquiums, symposiums and seminars; information, advisory and consultancy services relating to the aforementioned services.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; expert opinion relating to technology; professional consultancy relating to technology; professional consultancy relating to technology exploitation; development of new technology for others; technological research; research and development services; technological advisory services; advisory services relating to technological research; information, advisory and consultancy services relating to the aforementioned services.

Contested services in Class 41

Education; provision of training; arranging conferences, workshops, colloquiums, symposiums and seminars are identically contained in both lists of services (including synonyms).

The contested information, advisory and consultancy services relating to the aforementioned services (of education; provision of training; arranging conferences, workshops, colloquiums, symposiums and seminars) cannot be clearly separated from the opponent’s education; providing of training; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, training workshops. These services overlap and are, therefore, considered identical.

Contested services in Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services (the latter listed twice); development of new technology for others; technological research are identically contained in both lists of services (including synonyms).

The contested expert opinion relating to technology; professional consultancy relating to technology; professional consultancy relating to technology exploitation; technological advisory services; information, advisory and consultancy services relating to the aforementioned services cannot be clearly separated from the opponent’s technological services. These services overlap and are, therefore, considered identical.

The contested advisory services relating to technological research; information, advisory and consultancy services relating to the aforementioned services cannot be clearly separated from the opponent’s scientific and technological services and research. These services overlap and are, therefore, considered identical.

The contested development services; information, advisory and consultancy services relating to the aforementioned services cannot be clearly separated from the opponent’s development of new technologies for others. These services overlap and are, therefore, considered identical.

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 are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention can vary from average to high.

3. The signs

ENTI BARCELONA	ENTIQ
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as Austria and Germany, for whom the verbal elements of the marks (i.e. ‘ENTI’/’ENTIQ’) do not convey any meaning.

The earlier mark is composed of two verbal elements ‘ENTI BARCELONA’. The first word ‘ENTI’ is meaningless and hence distinctive. The additional word ‘BARCELONA’, however, will be understood by the relevant public as the well-known city of Spain. This element may only give an indication as to where the services are offered or where the opponent has its business. Therefore, the relevant public will not pay as much attention to this element as to the other, more distinctive, element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the signs at issue.

The contested sign consists of the word ‘ENTIQ’ which has no meaning in relation to the relevant services and is, therefore, distinctive.

Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally the signs coincide in letters and sounds of the distinctive element ‘ENTI*’, which forms the first word of the earlier mark and the first four letters of the contested sign. However, they differ in the last letter of the contested sign ‘Q’ and the additional word ‘BARCELONA’ of the contested sign, which is, as explained above, weak.

Furthermore, the fact that the signs coincide in the first part of the contested sign has more influence, as generally the first part is the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). Therefore, the additional letter ‘Q’ in the final part of the contested sign has less impact than the commonality in the other letters of the signs. The same applies for the element ‘BARCELONA’ that besides being weak, it is placed at the end of the contested earlier sign.

In view of the above and given that the only distinctive element of the earlier mark is entirely included in the contested sign, which differs from the former in only one letter, placed in its ending part, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs.

The additional concept conveyed by the element ‘BARCELONA’ in the contested sign is not particularly relevant, since this element is weak in relation to the relevant services and cannot indicate the commercial origin.

Neither of the distinctive elements of the signs (‘ENTI’ nor ‘ENTIQ’) 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. 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 (recital 8 of the EUTMR). 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).

As concluded above, the services covered by the trade marks in dispute are identical. They are directed at the public at large as well as at business consumer whose attention can vary from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are visually and aurally similar to a high degree, as they coincide in the string of letters ‘ENTI’, which constitute the entire first verbal (and distinctive) element of the earlier mark and four out of the five letters of the contested sign. The differences between the signs are confined to aspects that may either pass unnoticed or have a limited impact on the overall impression of the sign concerned, namely the letter ‘Q’ at the end of the contested sign (where consumers do not tend focus their attention) and the weak element ‘BARCELONA’ of the earlier mark.

Therefore, considering 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), the abovementioned visual and aural similarities between the signs result in a serious likelihood that the relevant public will confuse them and believe that they come from the same undertaking. Also, account must be taken of the fact that 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).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public, such as Austria and Germany. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 794 039. It follows that the contested sign must be rejected for all the contested services.

As European Union trade mark registration No 11 794 039 leads to the success of the opposition and to the rejection of the contested sign for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder 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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

María Belén IBARRA DE DIEGO

Birgit FILTENBORG

Michele M.      BENEDETTI – ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.