OPPOSITION No B 2 687 492

Desmond McCausland, Flat 37, Regal Building, 75 Kilburn Lane, London W10 4BB, United Kingdom (opponent), represented by Mathys & Squire LLP, Abbey House 32 Booth Street, Manchester Lancashire M2 4AB, United Kingdom (professional representative)

a g a i n s t

K&A Strategic Ltd, Capital City Building PO Box 1388, Victoria, Mahé, Seychelles and Katherine Harsant, 16 Culford Gardens, London SW3, United Kingdom (applicants).

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

DECISION:

1.        Opposition No B 2 687 492 is partially upheld, namely for the following contested services:

Class 41: Health club services [health and fitness training]; sporting activities in-person; adult training in-person; arranging and conducting of in-person educational forums; consultancy services relating to vocational skills; development of educational materials; educational services for providing in-person courses of education; teaching and training in-person in business, industry and information technology; tuition in-person; written training courses; none of the aforesaid services to be for entertainment, or to be provided by means of television, satellite, cable, telephone, the worldwide web or the internet or relating to television, cinema, radio or theatre.

2.        European Union trade mark application No 14 982 301 is rejected for all the above 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 European Union trade mark application No 14 982 301 for the word mark ‘The House’, namely against all the services in Classes 41 and 45. The opposition is based on European Union trade mark registration No 11 863 032 for the figurative mark . The opponent invoked Articles 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 07/01/2016. The earlier trade mark No 11 863 032 was filed on 31/05/2013 and registered on 05/06/2016. Therefore, the request for proof of use is inadmissible. The opponent was informed in this regard by the Office’s letter of 13/03/2017.

 

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.

1. The services

The services on which the opposition is based are, after a limitation by the opponent, the following:

Class 38: Provision of chatrooms; communications by telephone; directive telephone services; telephone messaging services; communication services by means of telephones, the Internet, the world wide web, cable, satellite, microwaves and electricity grid; telephony for voting purposes; telephony for entertainment purposes; information, advisory and consultancy services relating to the aforesaid services; none of the aforesaid services relating to music or the music industry.

Class 41: Entertainment by or relating to television; organization of competitions (education or entertainment); interactive telephone competitions; publishing; production of cinematographic films, shows and television programmes; provision of education and entertainment by means of television, satellite, cable, telephone, the worldwide web and the Internet; organization of shows; education and entertainment services all relating to television, cinema, radio and theatre; production and presentation of television programmes, films and shows; education by or relating to television; rental of pre-recorded shows, films, radio and television performances; production of video tapes and video discs; television entertainment; cinema entertainment; theatre entertainment; provision of game shows; television entertainment services involving telephonic audience participation; interactive entertainment for use with mobile phones; provision of Internet based games; information, advisory and consultancy services relating to the aforesaid services; none of the aforesaid services relating to music or the music industry.

The contested services are, after a limitation by the applicant on 07/03/2017, the following:

Class 41: Health club services [health and fitness training]; sporting activities in-person; adult training in-person; arranging and conducting of in-person educational forums; consultancy services relating to vocational skills; development of educational materials; educational services for providing in-person courses of education; teaching and training in-person in business, industry and information technology; tuition in-person; written training courses; none of the aforesaid services to be for entertainment, or to be provided by means of television, satellite, cable, telephone, the worldwide web or the internet or relating to television, cinema, radio or theatre.

Class 45: Arbitration, mediation and dispute resolution services; company registration services; expert consultancy relating to legal issues; information, advisory and consultancy services relating to legal matters; legal advice; licensing of intellectual property and copyright; licensing services relating to music publishing; licensing services relating to performance rights.

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 in Class 41

The contested adult training in-person; arranging and conducting of in-person educational forums; consultancy services relating to vocational skills; development of educational materials; educational services for providing in-person courses of education; teaching and training in-person in business, industry and information technology; tuition in-person; written training courses; none of the aforesaid services to be for entertainment, or to be provided by means of television, satellite, cable, telephone, the worldwide web or the internet or relating to television, cinema, radio or theatre are similar to a high degree to the opponent’s provision of education by means of television, satellite, cable, telephone, the worldwide web and the Internet; information, advisory and consultancy services relating to the aforesaid services; none of the aforesaid services relating to music or the music industry in Class 41. Even though the contested services exclude services to be for entertainment, or to be provided by means of television, satellite, cable, telephone, the worldwide web or the internet or relating to television, cinema, radio or theatre and the opponent’s services are offered by means of television, satellite, cable, telephone, the worldwide web and the Internet and exclude services relating to music or the music industry, their nature and purpose is still the same or very similar, as they are all educational services. These services can also be offered by the same kinds of companies and target the same public.

The contested health club services [health and fitness training]; sporting activities in-person; none of the aforesaid services to be for entertainment, or to be provided by means of television, satellite, cable, telephone, the worldwide web or the internet or relating to television, cinema, radio or theatre are similar to the opponent’s provision of entertainment by means of television, satellite, cable, telephone, the worldwide web and the Internet; information, advisory and consultancy services relating to the aforesaid services; none of the aforesaid services relating to music or the music industry in Class 41. These services have the same purpose, the same distribution channels and they target the same public.

Contested services in Class 45

The opponent, in its observations of 14/04/2016, points out that the applicant’s services in Class 45 are highly similar to the opponent’s broadcasting; television broadcasting; radio broadcasting; satellite broadcasting; cable television broadcasting in Class 38, as these services are likely to be offered and organised by the same entities and licensing will often form a necessary element of television broadcasting rendering both services complementary. The applicant also forwarded with its observations of 08/03/2017 a lot of arguments on the dissimilarity of the services. First of all, the earlier mark does not anymore contain the above mentioned services, because the list of services was limited. Furthermore, even though this was not the case, the Opposition Division still does not agree with all those arguments filed by the parties.

When comparing the contested services in Class 45, which are all kinds of legal services rendered by lawyers to individuals, groups of individuals, organizations and enterprises, with the opponent’s services in Class 38, which mainly include telecommunications and, formerly, also broadcasting services, and in Class 41, which mainly cover services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as entertainment services, they are all dissimilar. These services have a different nature and purpose. They are not complementary nor in competition. They have different distribution channels and target a different public. It is true that licensing is a necessary element of, for example, production of cinematographic films, shows and television programmes, but this service is offered by other companies than the ones that are producing the programmes, films and shows.

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 (highly) similar are directed at the public at large, for example sporting activities in Class 41, and at business customers with specific professional knowledge or expertise, for example those in the field of teaching. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the contracted services.

3. The signs

	The House
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 earlier mark is a figurative mark consisting of the words ‘THE HOUSE’, written in a slightly fancy typeface in capital greyish letters. Even though there appears a figurative element in the word ‘HOUSE’ in the form of a white ball, this one is very similar to the letter ‘O’ and considered as such. All the verbal elements are placed inside of a white, greyish rectangular frame.

The contested sign is a word mark consisting of the words ‘The House’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.

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 words ‘THE HOUSE’ are meaningful in certain territories, for example, in those countries where English is spoken or understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. Even though the words ‘THE HOUSE’ mean ‘a definite article and is used at the beginning of a noun’ (THE) and ‘a building in which people live, usually the people belonging to one family’ (HOUSE), (see Collins English Dictionary online) regarding the services at stake they are normally distinctive. However, the figurative element in the form of a frame in the earlier mark is not such an uncommon element and more of a decorative nature. The public will not pay as much attention to this weak element, as to the other more distinctive elements of the mark, namely the verbal elements ‘THE HOUSE’.

The earlier mark has no element which could be considered clearly more dominant (visually eye-catching). It is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.

Visually, the marks coincide in the sequence of letters ‘T-H-E H-O-U-S-E’, with the only difference that in the earlier mark these letters appear in a slightly fancy typeface and in different colours. On the other hand, the earlier mark contains a figurative element in the form of a rectangular frame, which is not shared by the contested sign.

Regarding this figurative element in the earlier mark, the Opposition Division points out the following: 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand, since one of the elements, namely the rectangular frame, also has a weak character, as pointed out above.

Regarding the slightly fancy typeface in which the verbal elements of the earlier mark are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the verbal elements it seems to embellish.

Therefore, the marks are, visually, similar to a high degree.

Aurally, the pronunciation of the marks coincides in the sound of the words /THE HOUSE/, present identically in both signs. With respect to the figurative element of the earlier mark, as pointed out above, the public will see the specific letter ‘O’ therein. Therefore, the signs are, phonetically, identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the same meaning, they are, conceptually, identical.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The services at issue have been found to be partly (highly) similar and partly dissimilar, while the level of attention of both, the general and more professional public, varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to a high degree and aurally and conceptually they are even identical.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, even though taking into account that the attention of the relevant public may be higher, especially given the phonetic and conceptual identity and the high visual similarity between the signs, likelihood of confusion cannot safely be excluded.

Regarding the differences in the slightly fancy typeface, the figurative element and the colours used in the earlier mark, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the opponent, being a variation of the earlier mark. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be (highly) similar to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on the ground under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.