OPPOSITION No B 2 371 022

Redcoon GmbH, Keltenstr. 2, 63741 Aschaffenburg, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Reckon Limited, Level 12, 65 Berry Street, North Sydney NSW 2060, Australia (applicant), represented by Stevens Hewlett & Perkins, 1 St Augustine’s Place, Bristol BS1 4UD, United Kingdom (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 371 022 is partially upheld, namely for the following contested goods and services:

Class 16:        Printed publications and printed matter; instructional and other manuals, publications and teaching materials (other than apparatus) including relating to computers and computer software; stationery.

Class 35:        Business management, business assistance; business services including business information services; retail management; business advisory and consultancy services; provision of business information services; facilitation of business to business and franchise businesses including supply chain advice; retail and wholesale of manuals; operation of customer, associate and reseller loyalty programs; providing business network opportunities; all the aforementioned services provided online, electronically or by other means.

2.        European Union trade mark application No 12 772 265 is rejected for all the above goods and services. It may proceed for the remaining 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 12 772 265, namely against all the goods and services in Classes 9, 16, 35, 36, 38 and 42. The opposition is based on European Union trade mark registrations No 8 776 511 and No 12 828 851. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

On 15/12/2015 the applicant made a limitation in the specification of the goods and services in Classes 9, 38 and 42, covered by the contested mark. On 31/10/2016, the contested mark was partially refused in parallel opposition proceedings No B 2 398 637 for goods and services in Classes 9, 35, 38, 41 and 42. The decision became final. The present opposition was maintained. Therefore, the Opposition Division will examine the opposition for the rest of the contested goods and services in Classes 16, 35 and 36, which were not refused in the parallel opposition proceedings and which are currently all the goods and services of the contested trade mark.

ADMISSIBILITY

The opponent has invoked European Union trade mark registration No 12 828 851 for the figurative mark  as basis of the opposition under Article 8(1)(b) EUTMR.

For an earlier right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTM application was filed. In the case of conflict between a national mark and an EUTM application, the hour and the minute of filing of the national mark is not relevant for determining which mark is earlier (judgment of 22/03/2012, C-190/10, Rizo, EU:C:2012:157).

The application date of European Union trade mark registration No 12 828 851 is 29/04/2014. The trade mark does not have any priority. The application date of the contested European Union trade mark application No 12 772 265 is 08/04/2014.

It follows that European Union trade mark registration No 12 828 851 is not an earlier right within the meaning of Articles 8(2) and 41(1) EUTMR.

The opposition must, therefore, be rejected as inadmissible, as far as it is based on European Union trade mark registration No 12 828 851.

The examination of the opposition continues in relation to the opponent’s European Union trade mark registration No 8 776 511.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 earlier European Union trade mark registration No 8 776 511.

In the present case the contested trade mark was published on 26/05/2014. Earlier European Union trade mark registration No 8 776 511 was registered on 15/06/2010. Therefore, the request for proof of use is inadmissible.

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 16:        Paper, cardboard and goods made from these materials, included in class 16; printed matter; prospectuses; newspapers; periodicals; newspaper and magazine inserts; reference guides (publications); compilations (publications); loose-leaf collections (publications); classified directories; brochures; catalogues; exercise books; monographs and books; instructional and teaching material (except apparatus); graphic representations, graphic reproductions.

Class 35:        Advertising, in particular newspaper, periodical, radio, cinema and television advertising and advertising on local, regional, national and international computer networks; public relations; marketing; retailing and wholesaling of electronic entertainment apparatus and mechanical and electronic household appliances.

The contested goods and services are the following:

Class 16:        Printed publications and printed matter; instructional and other manuals, publications and teaching materials (other than apparatus) including relating to computers and computer software; stationery.

Class 35:        Business administration, business management, business assistance; business services including business information services; retail management and administration; business advisory and consultancy services; provision of business information services; data collection, compilation, retrieval and verification; facilitation of business to business and franchise businesses including supply chain advice; management of data and databases; accountancy; retail and wholesale of manuals; accounting services; operation of customer, associate and reseller loyalty programs; providing business network opportunities; all the aforementioned services provided online, electronically or by other means.

Class 36:        Financial services including trading and broking of securities and shares and clearing house services; financial information services; services in relation to financial transactions and settlements, purchase payment and bill payment; banking services; funds, money and currency transfer and exchange services; financial advisory, consultancy and information services; accounts payable and receivable services; all the aforementioned services provided online, electronically or by other means.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, and the term ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 goods in Class 16

The contested printed matter are also contained in the opponent’s list of goods. Therefore, they are identical.

As seen above, the word ‘including’, used in the applicant’s list of goods and services, introduces a non-exhaustive list of examples. Therefore, the contested teaching materials (other than apparatus) including relating to computers and computer software are identical to the opponent’s teaching material (except apparatus).

The contested printed publications; instructional and other manuals and publications including relating to computers and computer software are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested stationery overlaps with the opponent’s paper, as both categories include writing paper. Therefore, they are identical.

Contested services in Class 35

Loyalty programs are structured marketing strategies designed to encourage customers to continue to shop at or use the services of businesses associated with each program. The contested operation of customer, associate and reseller loyalty programs; all the aforementioned services provided online, electronically or by other means are included in the broad category of, or overlap with, the opponent’s marketing. Therefore, they are identical.

The contested retail and wholesale of manuals; all the aforementioned services provided online, electronically or by other means and the opponent’s retailing and wholesaling of electronic entertainment apparatus and mechanical and electronic household appliances have the same nature since all are retail and wholesale services, respectively. They have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they may coincide in their relevant public. Therefore, they are considered to be similar.

The contested business management, business assistance; business services including business information services; retail management; business advisory and consultancy services; provision of business information services; facilitation of business to business and franchise businesses including supply chain advice; providing business network opportunities; all the aforementioned services provided online, electronically or by other means are or include services that belong to the broad category of business management services which consist of providing businesses with the necessary support, including tools and expertise, to acquire, develop and expand market share. They are usually rendered by companies specialised in this specific field such as business consultants. These services include business networking, business planning, business advisory/consultancy services and business information services. All these services are considered similar to a low degree to the opponent’s advertising, in particular newspaper, periodical, radio, cinema and television advertising and advertising on local, regional, national and international computer networks, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. It should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. The purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice regarding how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services and therefore the relevant public may believe that these services have the same professional origin. Consequently, considering the above these services are similar to a low degree (decision of 22/11/2011, R 2163/2010-1, INNOGAME / InnoGames, § 13-17).

On the other hand, the remaining contested services in Class 35, namely business administration; retail administration; data collection, compilation, retrieval and verification; management of data and databases; accountancy; accounting services; all the aforementioned services provided online, electronically or by other means are generally business administration services and office functions. These services comprise services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation. They consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. These services also comprise services related to the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies. These contested services are not sufficiently related to the opponent’s goods and services in Classes 16 and 35. The natures and intended purposes of the goods and services under comparison are different. Furthermore, they are neither in competition with each other nor complementary. In addition, the abovementioned contested services in Class 35 and the opponent’s goods and services will not have the same providers. For example, a professional who helps with the performance of business operations will not offer advertising strategies. Moreover, despite the potential use of some of the opponent’s goods in Class 16 in the accomplishment of some of the contested services, the opponent’s goods are not indispensable for performing the services in question in the sense that the public would expect them to originate from the same undertakings. Therefore, the abovementioned contested services are dissimilar to the opponent’s goods and services in Classes 16 and 35.

Contested services in Class 36

The contested financial services including trading and broking of securities and shares and clearing house services; financial information services; services in relation to financial transactions and settlements, purchase payment and bill payment; banking services; funds, money and currency transfer and exchange services; financial advisory, consultancy and information services; accounts payable and receivable services; all the aforementioned services provided online, electronically or by other means are financial services usually provided by financial and banking institutions.

The opponent’s services in Class 35 include advertising, marketing and public relations services, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In doing so, many different means and products might be used. These services are provided by specialised companies that research their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy for advertising their goods and services through newspapers, websites, videos, the internet, etc.

The services under comparison have different natures and purposes and they are normally rendered by different undertakings through different distribution channels. The opponent’s services aim to support or help other businesses to do or improve their business. Consequently, they are professional business-to-business services with the aim of assisting other companies with their commercial activities. It is very unlikely that financial institutions would render such business-related services. The services are neither in competition nor complementary in such a way that one would be indispensable or important for the other. Therefore, the services under comparison are dissimilar.

These contested services are also not sufficiently related to the remaining opponent’s services in Class 35, which are retailing and wholesaling services of particular goods, or to the opponent’s goods in Class 16, which are paper, cardboard and certain goods made of those materials, as well as office requisites. These contested services and the opponent’s goods and services in Classes 16 and 35 have different natures and purposes and are not provided by the same undertakings. They differ in their distribution channels and relevant publics. Furthermore, these services are neither complementary nor in competition. Therefore, they are considered dissimilar.

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 goods and services found to be identical or similar (to different degrees) are directed partly at the public at large (e.g. stationery in Class 16) and partly at business customers with specific professional knowledge or expertise, such as companies seeking assistance in how to be successful, take advantage of business opportunities or promote the launch or sale of their goods and services. The degree of attention is considered to vary from average (for the goods in Class 16 and part of the services in Class 35) to higher than average (e.g. for business management in Class 35), considering the exact purpose and nature of the goods and services.

3. The signs

redcoon	RECKON
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 marks under comparison are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public.

Since the marks have no meaning for the public taken into account, they are distinctive to an average degree in relation to the relevant goods and services.

The earlier mark is the word mark ‘redcoon’ and the contested sign is the word mark ‘RECKON’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

Visually, the signs coincide in the sequence of letters ‘RE(-)C-ON’, present in the same order in both marks. They differ in two letters in the earlier mark, ‘D’ in the third position and the second letter ‘O’ in the sixth position, and in one letter in the contested sign, ‘K’ in the fourth position, and in the positioning of the letter ‘C’ in the marks, which is in the fourth position in the earlier mark and in the third position in the contested sign. Given that the differences between these words are in the middle of each word, they are more likely to go unnoticed by consumers. Therefore, the marks are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘RE*CO*N’/‘RE*CKON’ respectively, as the letter ‘C’ in the earlier mark and the letters ‘CK’ in the contested sign will be pronounced as ‘K’ in both cases. The pronunciation of the marks differs only in the sound of the third letter ‘D’ in the earlier mark and the additional letter ’O’ in the earlier mark, which may lead some of the consumers to pronounce the ‘O’ in that mark as a longer sound and may introduce an additional slight aural difference between the marks. Both marks will be pronounced in two syllables ([RED-KO:N] and [RE-KON] respectively) and have, therefore, the same rhythm. Therefore, the marks are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the Italian- and Spanish-speaking parts of 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for some of the relevant services in Class 35. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The appreciation of the 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).

The goods and services under comparison are partly identical, partly similar (to different degrees) and partly dissimilar. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods and services.

The signs are visually similar to an average degree and aurally similar to a high degree on account of the letters that the signs have in common, ‘RE(*)C(*)ON’, and their similar overall structures. Due to the position of the differing letters in the middle of the signs, these differences are more likely to go unnoticed by consumers, who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Moreover, the marks under comparison will not be associated with any meaning and will be perceived as fanciful words by the part of the relevant public taken into account. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

Therefore, even considering that the degree of attention that the relevant public will display for part of the goods and services at issue may be higher than average, the differences between the signs are not sufficient to offset the similar overall impression created by the marks in the minds of consumers. Even consumers with 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).

Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between the marks.

This finding is true even for the services that are similar to only a low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them. The similarity between the signs, due to the coincidence in five of their letters, outweighs the low degree of similarity between some of the services.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 776 511.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) to the goods and services of the abovementioned 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 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

Adriana VAN ROODEN

Boyana NAYDENOVA

Benoit VLEMINCQ

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.