OPPOSITION No B 2 692 492

Instituto de Educación Superior Intercontinental de la Empresa, S.L., C/ Cantón Claudino Pita, 2, 15300 Betanzos (La Coruña), Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Maria Concetta Palmeri, Via Bisagno n. 14, 00100 Roma, Italy (applicant), represented by Enrico La Malfa, Via Santo Stefano 58, 40125 Bologna, Italy (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 692 492 is partially upheld, namely for the following contested services:

Class 38: Providing access to web sites on the internet; Live transmissions accessible via home pages on the internet [webcam]; Video transmission services; Streaming of video material on the internet.

Class 41: Audio and video production, and photography; Publishing services; Organizing cultural and arts events; Film distribution; Provision of on-line entertainment; Providing on-line publications; Electronic libraries for providing electronic information (including archive information) in the form of text, audio and/or video information, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general.

2.        European Union trade mark application No 15 234 735 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 234 735. The opposition is based on European Union trade mark registration No 15 069 347. 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.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Electronic publications, downloadable; Electronic publications recorded on computer media; downloadable educational course materials; Education software; Programs (Computer -) [downloadable software]; Peripherals adapted for use with computers; Films, exposed; Sound recording carriers; Magnetic tapes; Application software for mobile phones; Computer software applications, downloadable; Computer application software; Application software for wireless devices; Audio visual recordings.

Class 16: Paper and cardboard; 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; Printed publications; Periodicals; Books; Pamphlets; Newspapers; Printed educational materials.

Class 41: Entertainment, education and instruction services; Sporting and cultural activities; Arranging of displays for cultural purposes; Arranging and conducting of conferences; Arranging and conducting of seminars; Arranging and conducting of congresses; Organising of meetings in the field of education; Arranging and conducting of symposiums; Arranging and conducting of colloquiums; Organising of educational lectures; Publication of texts; Providing on-line electronic publications, not downloadable; Publication of electronic books and journals on-line; Publication of books; Organising of competitions for education; Provision of training courses; Arranging of contests; Translation and interpretation; Gambling; Cultural activities; Organization of cultural shows.

Following the applicant’s limitation dated 13/04/2016, the contested services are the following:

Class 35: Advertising; Provision of advertising space; Public relations services; Online advertisements; Placing advertisements for others; Marketing the goods and services of others; Promotion services; Sales promotion for others; Consultations relating to business promotion; Advertising for the promotion of e-commerce, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general.

Class 38: Providing access to web sites on the internet; Live transmissions accessible via home pages on the internet [webcam]; Video transmission services; Streaming of video material on the internet.

Class 41: Audio and video production, and photography; Publishing services; Organizing cultural and arts events; Film distribution; Provision of on-line entertainment; Providing on-line publications; Electronic libraries for providing electronic information (including archive information) in the form of text, audio and/or video information, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 35

The contested advertising; provision of advertising space; public relations services; online advertisements; placing advertisements for others; marketing the goods and services of others; promotion services; sales promotion for others; consultations relating to business promotion; advertising for the promotion of e-commerce, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general are all services falling within the broad category of advertising services. They consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.  

These services are not similar to the opponent’s goods and services in Classes 9, 16 and 41. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as DVDs or software in Class 9, and printed matter in Class 16. These goods and services are considered dissimilar.

Contrary to the opponent’s arguments, the Opposition Division considers that the contested services are not similar to the opponent’s education and instruction services since these services do not have the same natures and purposes, they are not rendered by the same companies and they are not complementary.

Therefore, the contested services in Class 35 are not similar to the opponent’s goods and services.

Contested services in Class 38

The contested providing access to web sites on the internet; live transmissions accessible via home pages on the internet [webcam]; video transmission services; streaming of video material on the internet are telecommunication services which allow people to communicate with one another by remote means.

The opponent’s apparatus for recording, transmission or reproduction of sound or images are used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line.

There is a link between these goods in Class 9 (telecommunication apparatus) and the services in Class 38 (telecommunication services). They are similar because they are complementary, and even though their nature is different, their purposes and distribution channels are the same.

Contested services in Class 41

The contested provision of on-line entertainment; film distribution, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general are included in the opponent’s entertainment. Therefore, they are identical.

The contested organizing cultural and arts events; electronic libraries for providing electronic information (including archive information) in the form of text, audio and/or video information, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general are included in the opponent’s cultural activities. Therefore, they are identical.

The contested providing on-line publications, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general overlap with the opponent’s providing on-line electronic publications, not downloadable. Therefore, they are identical.

The contested publishing services, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general include, as a broader category, or overlap with, the opponent’s publication of books. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested audio and video production and photography, none of the aforesaid services being connected to or intended for clothing, footwear, bags, jewellery, spectacles, electronic devices and fashion or travel goods in general are similar to the opponent’s entertainment. These services have the same final purpose (amusement, enjoyment), they target the same consumers and they coincide in their providers.

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 or similar are directed at the public at large and at business consumers with specific professional knowledge or expertise in relation to audio and video production, film distribution. The degree of attention is considered to be average.

3. The signs

	ISIDE
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 expression of the earlier mark ‘INSTITUTO EDUCACIÓN SUPERIOR INTERCONTINENTAL DE LA EMPRESA’ is meaningful in Spanish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The element ‘IESIDE’ is the dominant element of the earlier sign, by virtue of its position at the beginning of the sign, its size and its bigger characters in white on a blue background. The expression ‘BUSINESS INSTITUTE’ is visually secondary since it appears at the bottom of the sign in much smaller letters. The expression ‘INSTITUTO EDUCACIÓN SUPERIOR INTERCONTINENTAL DE LA EMPRESA’ placed on the right-hand side of the sign is also visually less visible than the element ‘IESIDE’ since it is written in smaller letters and in a pale blue colour.

The expression ‘INSTITUTO EDUCACIÓN SUPERIOR INTERCONTINENTAL DE LA EMPRESA’, which means ‘business intercontinental superior institute of education’ is weak in relation to the relevant services (it refers to the type of provider of the services) whereas it is distinctive in relation to the relevant goods. Even though ‘IESIDE’ can be perceived as its acronym, as such, it has no meaning and is, therefore, distinctive. The expression ‘BUSINESS INSTITUTE’ will be understood by a significant part of the public since the word ‘business’ is commonly used in trade and ‘institute’ is very similar to the Spanish equivalent ‘instituto’. For the relevant services, this expression is therefore weak since it informs consumers that the services are provided by a business institute whereas for the relevant goods it is distinctive.

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 present case, the blue background of the earlier mark is non-distinctive since it is a banal decorative geometrical shape.

Visually, the dominant and distinctive element ‘IESIDE’ of the earlier mark and the distinctive component ‘ISIDE’ of the contested sign coincide in the five letters ‘I-*-S-I-D-E’ and only differ in the additional letter ‘E’ and in the slight stylisation of the word ‘IESIDE’ of the earlier mark. The signs differ in the additional figurative and verbal elements of the earlier sign which have been considered visually secondary and weak in relation to the relevant services. Therefore, the signs are visually similar to an average degree.

Aurally, the dominant and distinctive element ‘IESIDE’ of the earlier mark, pronounced /i-e-si-de/ and the distinctive component ‘ISIDE’ of the contested sign, pronounced /i-si-de/ coincide in the sounds of the letters ‘I-*-S-I-D-E’ and only differ in the sound of the additional letter ‘E’ of the earlier sign. However, this additional letter does not introduce a significant difference. Indeed, due to its position, it is not strongly audible. The signs further differ in the sounds of the additional verbal elements of the earlier sign. However, since these elements are visually secondary, it is probable that the relevant public will refer to the earlier sign aurally as just 'IESIDE' which enhances the similarity. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the above findings. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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, despite the presence of a non-distinctive element and, in relation to the services, some weak elements, as stated above in section c) of this decision.

5. 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).

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).

The contested services are partly identical and similar and partly dissimilar. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally similar to a high degree. The contested sign is fully included in the dominant and distinctive element of the earlier sign, which is also placed in the initial part of the sign where the attention of the public is focussed on.  

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the above mentioned visual and aural similarities and, therefore, there is a likelihood of confusion on the part of the Spanish-speaking part of the public.

Consequently, 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 identical or similar to the goods and services 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.

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

Catherine MEDINA

Frédérique SULPICE

Begoña URIARTE VALIENTE

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.