OPPOSITION No B 2 727 124

Shore Capital International Limited, Unter den Linden 32/34, 19117 Berlin, Germany (opponent), represented by Görg Partnerschaft von Rechtsanwälten, Klingelhöferstr. 5, 10785 Berlin, Germany (professional representative)

a g a i n s t

Circle Imperium B.V., Kleine Gartmantplantsoen 10, 1017 RR Amsterdam, The Netherlands (holder), represented by Michiel Steenhuis, Borneostraat 10, 5215 VC s-Hertogenbosch, The Netherlands (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 124 is partially upheld, namely for the following contested services:

Class 38:         Telecommunications; provision of internet forums; providing access to chat rooms and forums on the internet or other (electronic) and / or (mobile) networks.

2.        International registration No 1 266 666 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 266 666. On 17/11/2016 it requested restriction of the scope of the opposition, therefore the opposition is directed against part of the services, namely against all the services in Classes 38 and 41. The opposition is based on European Union trade mark registration No 12 829 073. 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 services

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

Class 35:         Professional business analysis, research and information, in particular compilation and systemisation of business data, compilation of statistics (for business or commercial use), providing of statistical economic information, professional business evaluations and analyses, professional business assessment of business opportunities, sales analysis, economic forecasting and analysis for business purposes, business efficiency expert services; publicity, marketing and sales promotion, in particular distribution of advertising, marketing and and promotional materials, providing of advertising space, time and media, consultancy and support in the field of advertising, marketing and sales promotion, conducting of marketing campaigns, direct marketing, online marketing, online advertising on computer networks, telephone advertising, television advertising, development of marketing strategies and concepts, creation of advertising material, publicity texts and adverts for others, computer-based advertising, press advertising, placement of advertisements, advertising of real estate, financial products and investment funds; business management and company structure, in particular business management and organisation consultancy, business management consultancy, personnel management consultancy, professional business consultancy, commercial or industrial management assistance, business management assistance, arranging of contracts, for others, in relation to the buying and selling of goods and services, presentation of companies on the internet and via other media, arranging commercial transactions for others (including within the framework of e-commerce), procurement services for others [purchasing goods and services for other businesses).

Class 36:         Real estate affairs, in particular investment consultancy relating to real estate, creation of investment plans relating to real estate, cash investment transactions with real estate, selection and purchase of real estate for others, support for others in the purchase of real estate, consultancy relating to valuation of real estate, consultancy relating to the purchase of real estate, consultancy relating to real estate holdings, consultancy for businesses relating to real estate, valuation and management of real estate, real estate management, computerised dissemination of information relating to real estate, purchase of real estate for others, real estate agencies for sale and rental of buildings, real estate brokers, presentation of real estate offered for sale or rental, including on the internet, dissemination of information relating to real estate and the real estate market, financial services and financial brokerage relating to real estate, rental of buildings, rental of flats, rental of offices, apartment house management, rental of real estate, property brokerage, real estate management for the processing of property transactions, real estate management through trustee services, investment and leasing transactions for real estate, investment consultancy relating to real estate, capital investments relating to commercial real estate, residential investment consultancy, real estate equity sharing, land acquisition for or on behalf of others, leasing and rental of commercial premises, retail outlets, property and freehold property, brokerage for rental of buildings, for arranging of rental contracts for land, accommodation bureaux (apartments), arranging of real estate for rent via online portals, management relating to real estate investment, research relating to the purchase of real estate, real estate trustee services, rental of flats and commercial premises for others, rental of shopping centres; finance, monetary affairs and banking, in particular financial management, mortgage investment management, lease securitisation, processing of loan-related transactions, consultancy in relation to the granting of loans, brokerage of loans and credit bureaux, granting of mortgages, financial services in the field of money lending, financial services relating to mortgages, financial services relating to real estate and property, financial services for the purchase of real estate, financing of land acquisition, financing of property loans, granting of real estate loans, mortgage consultancy, organisation of finance for construction projects, project financing, arranging of loans for securing funds, for others, arranging of loan agreements secured on real estate, financial guarantees (surety services) for real estate, arranging of financing for home loans, mutual funds; valuation services, in particular valuation of real estate for tax purposes, valuations and financial appraisals of property, valuation of property, financial valuation of buildings, financial valuation with regard to the design of buildings, financial valuation of freehold property, financial valuation of leasehold property, assets and real estate, valuation relating to the surveying of buildings; underwriting services, in particular real estate insurance brokerage, insurance consultation.

Class 37:         Building construction, repair and installation services, in particular refurbishment and renovation of real estate, evaluation of building projects, building construction supervision, building site development, building management, building management consultancy, maintaining an object in its original state.

Class 38:         Providing access to online computer databases and online searchable databases in the field of real estate.

Class 42:         Providing of internet search engines in the field of real estate, providing platforms for offering goods and services in electronically accessible databases

The contested services are the following:

Class 38:         Telecommunications; provision of internet forums; providing access to chat rooms and forums on the internet or other (electronic) and / or (mobile) networks.

Class 41:         Recreation and leisure; arranging and organization of cultural, educational, sporting and leisure events; arranging and organization of music events, pop festivals, concerts, workshops and seminars; performing and composing music and entertainment programs, including radio and tv; organizing and conducting stage performances; producing films; provision of musical events; editing and publishing of magazines, editing and publishing of magazines, books, texts, photos and posters, video and audio recordings; all the aforesaid services specifically aimed at matchmaking and dating.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s and holder’s list of services respectively, indicate that the specific 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 services in Class 38

The contested telecommunications include, as a broader category, the opponent’s providing access to online computer databases and online searchable databases in the field of real estate. 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 services of providing access to chat rooms and forums on the internet or other (electronic) and / or (mobile) networks have the same nature as the opponent’s providing access to online computer databases and online searchable databases in the field of real estate since the kind of activity is the same, namely both provide access to a certain although different content on the internet, they have the same purpose and method of use. Therefore, they are similar.

The contested provision of internet forums contains activity of supplying access for use of forums which is a medium where ideas and views on a particular issue can be exchanged. These services have the similar nature to the opponent’s providing access to online computer databases and online searchable databases in the field of real estate since both provide/supply access and the possibility to use some internet content. Where the forums refer to real estate issues, they have the same purpose and may be complementary. They may coincide in the service provider. Therefore they are similar.

Contested services in Class 41

The contested recreation and leisure; arranging and organization of cultural, educational, sporting and leisure events; arranging and organization of music events, pop festivals, concerts, workshops and seminars; performing and composing music and entertainment programs, including radio and tv; organizing and conducting stage performances; producing films; provision of musical events; editing and publishing of magazines, books, texts, photos and posters, video and audio recordings; all the aforesaid services specifically aimed at matchmaking and dating cover services are rendered by persons or companies and include activities that are intended to entertain people, to engage their attention or education and training. These services do not have the same nature, method of use or purpose as the opponent’s services of professional business analysis, research and information, in particular compilation and systemisation of business data, compilation of statistics (for business or commercial use), providing of statistical economic information, professional business evaluations and analyses, professional business assessment of business opportunities, sales analysis, economic forecasting and analysis for business purposes, business efficiency expert services; publicity, marketing and sales promotion, in particular distribution of advertising, marketing and and promotional materials, providing of advertising space, time and media, consultancy and support in the field of advertising, marketing and sales promotion, conducting of marketing campaigns, direct marketing, online marketing, online advertising on computer networks, telephone advertising, television advertising, development of marketing strategies and concepts, creation of advertising material, publicity texts and adverts for others, computer-based advertising, press advertising, placement of advertisements, advertising of real estate, financial products and investment funds; business management and company structure, in particular business management and organisation consultancy, business management consultancy, personnel management consultancy, professional business consultancy, commercial or industrial management assistance, business management assistance, arranging of contracts, for others, in relation to the buying and selling of goods and services, presentation of companies on the internet and via other media, arranging commercial transactions for others (including within the framework of e-commerce), procurement services for others [purchasing goods and services for other businesses) in Class 35. Furthermore, they require different types of knowledge and expertise in comparison to business management, professional business analysis, research and information and publicity, marketing and sales promotion. They do not coincide in distribution channels as they will have different types of providers and they will be addressed to a different part of the public, since services in Class 35 are directed at professional customers, whereas services in Class 41 usually target the public at large. The services are not complementary or in competition with each other. The fact that these services may appear in advertisements is insufficient for finding similarity. Taking into consideration the differences between them, they are considered dissimilar.

The contested recreation and leisure; arranging and organization of cultural, educational, sporting and leisure events; arranging and organization of music events, pop festivals, concerts, workshops and seminars; performing and composing music and entertainment programs, including radio and tv; organizing and conducting stage performances; producing films; provision of musical events; editing and publishing of magazines, books, texts, photos and posters, video and audio recordings; all the aforesaid services specifically aimed at matchmaking and dating are also dissimilar to the opponent’s services in Classes 36, 37, 38, 42 since they have different natures and purposes, they are not complementary or in competition with each other. They target a different public and do not coincide in the distribution channels and service 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 and similar are directed at public at large.

The degree of attention is considered to be average.

3. The signs

InnerCircle
Earlier trade mark	Contested sign

The relevant territory is 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 international registration. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public since the common elements (‘Inner’ and ‘Circle’) are meaningful in the countries where English is understood.

The earlier mark is a word mark containing the verbal element ‘InnerCircle’.

Although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, although the earlier mark is a one word mark, the relevant public would perceive it as composed of two different components, namely ‘Inner’ and ‘Circle’. This is also reinforced by the fact that the first letters of these components are capital letters.

The element ‘InnerCircle’ will be understood by the relevant public as an expression ‘Inner Circle’ meaning ‘a small group of people within a larger group who have a lot of power, influence, or special information’ (information extracted from Collins Dictionary on 07/04/2017 at https://www.collinsdictionary.com/dictionary/english/inner-circle). Neither of the elements is descriptive for the relevant services and the distinctiveness of both of them is normal.

The contested sign is a figurative mark consisting of the verbal elements ‘The’, ‘Inner’ and  ‘Circle’ depicted in a black colour slightly stylised typeface. The verbal elements ‘Inner Circle’ will be understood by the relevant public as indicated above. The element ‘The’ will be perceived as a definite article, that is ‘a determiner that introduces a noun phrase and implies that the thing mentioned has already been mentioned, or is common knowledge, or is about to be defined’ (information extracted from Oxford Dictionaries on 11/04/2017 at https://en.oxforddictionaries.com/definition/us/definite_article).

As stated above, the elements ‘Inner’ and ‘Circle’ are equally distinctive. The element ‘The’, being understood as a mere definite article, will have lesser impact on the consumers and is less distinctive than the elements ‘Inner’ and ‘Circle’.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in words ‘Inner’ and ‘Circle’. However, they differ in the element ‘The’. Although usually consumers tend to focus more on the beginning of the signs, the relevant English-speaking public will recognize ‘The’ in the contested sign as an article that is used at the beginning of noun groups to refer to someone or something that is already mentioned or identified and will naturally focus on the words identified, namely ‘Inner Circle’ which is identically contained in the earlier trade mark.  

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘Inner Circle’, the signs 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, although the earlier trade mark as a whole has a meaning and will be understood by the relevant public as stated above in section c), it does not directly describe characteristics of the services in question therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

In the present case, part of the services at issue are identical and similar, namely the services in Class 38 and the relevant public’s degree of attention is average in relation to the services. The signs are conceptually identical and visually and aurally highly similar. The distinctiveness of the earlier mark is average.  

In line with what has been stated in part c) of this decision, both signs contain the words ‘Inner’ and ‘Circle’. The difference between them lies in the absence of space between the words in the earlier mark whereas the contested sign contains a definite article ‘The’ in front of them. As stated in part c) of this decision, the fact that in the earlier mark two words appear as one word, will not affect the perception of the sign, the consumers will read it, pronounce it and perceive it as ‘Inner Circle’, in the same way as they will perceive the elements ‘Inner Circle’ in the contested sign. Regarding the difference in the verbal element ‘The’ in the contested sign, in its observations the opponent argues that it will be perceived by the relevant public as a commonplace and banal element, which  should be considered as non-distinctive. ‘The’ will be perceived by the English-speaking public as a definite article as stated above. It will not add any additional meaning and the relevant public ‘The Inner Circle’ will perceive identically as ‘Inner Circle’ or ‘InnerCircle’.  

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The Opposition Division is of the opinion that in spite of the differences mentioned above and due to the conceptual identity and high visual and aural similarity between the signs, a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English speaking 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 international registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and 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.

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

Keeva DOHERTY

Biruté SATAITE-GONZALEZ

Michaela SIMANDLOVA

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.