OPPOSITION No B 2 663 568

The World Institute of Slowness AS, Johan Øydegardsvei 11, 4632 Kristiansand S, Norway (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London,  EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

GianLuca Marroni, Via G. Bresadola, 27 Pal.2, 00171 Rome, Italy (applicant)

On 10/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 663 568 is partially upheld, namely for the following contested goods and services:

Class 16: Gums [adhesives] for stationery or household purposes; Paper and cardboard; Stationery and educational supplies; Decoration and art materials and media; Filtering materials of paper; Disposable paper products; Works of art and figurines of paper and cardboard, and architects' models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 35: Business assistance, management and administrative services; Business analysis, research and information services; Commercial trading and consumer information services; Advertising, marketing and promotional services.

Class 39: Packaging and storage of goods; Distribution by pipeline and cable; Parking and vehicle storage, mooring.

Class 41:Education, entertainment and sports; Publishing and reporting.

2. European Union trade mark application No  14 834 782 is rejected for all the above. It may proceed for the remaining money holders in Class 16. 

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application (EUTM) No 14 834 782. The opposition is based on, inter alia, EUTM No 9 895 269. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM No 9 895 269.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 25: Clothing, footwear, headgear.

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; Business management; Business administration; Office functions; Advertising campaign services; Advertising services provided via the Internet; Advertising and promotional services.

Class 37: Building construction; Repair; Installation services.

Class 39: Transport; Packaging and storage of goods; Travel arrangement.

Class 40: Treatment of materials.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Providing courses of instruction in selfawareness; Arranging and conducting seminars, conferences, exhibitions and concerts; none of the aforesaid relating to television, radio, film or video production.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

Class 43: Services for providing food and drink; Temporary accommodation.

The contested goods and services are the following:

Class 16: Gums [adhesives] for stationery or household purposes; Paper and cardboard; Stationery and educational supplies; Decoration and art materials and media; Filtering materials of paper; Money holders; Disposable paper products; Works of art and figurines of paper and cardboard, and architects' models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 35: Business assistance, management and administrative services; Business analysis, research and information services; Commercial trading and consumer information services; Advertising, marketing and promotional services.

Class 39: Packaging and storage of goods; Distribution by pipeline and cable; Parking and vehicle storage, mooring.

Class 41: Education, entertainment and sports; Publishing and reporting.

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 following contested goods are identical:

• The contested gums [adhesives] for stationery or household purposes; paper and cardboard; Stationery and educational supplies are equally designated by the earlier right, despite slightly differing wording, as in the case of adhesives for stationery or household purposes; instructional and teaching material (except apparatus) from the earlier right.

• The decoration and art materials and media are included in the artists’ materials from the earlier right to the extent that ‘decoration materials and media’ is simply another way of referring to art supplies in general.

• The contested filtering materials of paper; Disposable paper products; Works of art and figurines of paper and cardboard, and architects' models; bags and articles for packaging, wrapping and storage of paper, cardboard are included in the broad category of paper, cardboard and goods made from these materials, not included in other classes from the earlier right.

• The contested bags and articles for packaging, wrapping and storage of plastics are included in plastic materials for packaging (not included in other classes).

The contested money holders are however dissimilar to all the goods and services covered by the earlier right. This item relates to a clip (or similar) used to hold bank notes together and no relationship can be found as concerns any of the goods and services covered by the earlier mark. Additionally, according to Article 28(7) EUTMR, goods or services shall not be 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 and indeed there is no connection between any of the goods in this class. There is patently no link between any of the apparel or footwear items in Class 25, or the foodstuffs and beverages in Classes 29-33. As to the services from the earlier right, goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. As such, these contested goods do not coincide in any relevant points of contact with the goods and services of the earlier rights, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.  

Contested services in Class 35

The following services are identical: 

• The contested business management and administrative services, advertising, promotional services are equally designated by the earlier right despite slightly differing wording. The contested business assistance; Business analysis, research and information services are wholly included in business management as the latter is made up of a vast number of activities intended to help companies manage their business as concerns controlling, leading, monitoring, organising and planning. Such services include consultancy, advisory and assistance activities as well as a range of other services.

• The contested marketing is included in advertising services as found in the earlier mark.

The contested Commercial trading and consumer information services is considered a vague term and as such can only be interpreted in its natural and literal meaning. In this sense and also in view of the specific class in which it is protected, such services are business support activities including the processing of orders, advisory services and the arrangement of commercial contracts for example. Clearly there are relevant points of contact with the business management services from the earlier right as these are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants who give assistance and information in this regard. From this stance there are several coincidences which mean that both sets of services may well derive from the same undertakings and be aimed at the same consumers meaning also a match in distribution channels. As such the services are at least similar. 

Contested services in Class 39

The contested services are all identical for the reasons outlined below.

• The contested packaging and storage of goods is equally designated in the earlier right. 

• The contested vehicle storage is included in the aforementioned storage of goods. 

• The contested distribution by pipeline and cable is included in the broader transport services from the earlier right. 

• Taking into account that ‘storage of goods’ refers to putting and keeping things in a special place for the future and has a very broad meaning, it includes the contested parking and mooring as both refer to putting a vehicle (whether a car or a boat for example) in a place for safe keeping.

Contested services in Class 41

The contested education, entertainment and sports are also protected by the earlier right, despite slightly differing wording, and as such are identical. 

The contested publishing and reporting are similar to a low degree to the providing of training as found in the earlier right given that often these services are interdependent and as such complementary. Further they are frequently provided via the same distribution channels. 

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 and similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price. For example, a higher degree of attention will be given to business management services due to the impact on the smooth running of the company and the financial implications.

3. The signs

SLOW
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.

‘SLOW’ common to all signs, will be understood as something moving or operating, or designed to do so, only at a low speed, not quick or fast and is a basic English adjective meaning the opposite of ‘fast’. The Opposition Division finds that despite an allusive quality perhaps as to the speed at which the goods are manufactured or the services are delivered, there is still no direct association and moreover it is a very subjective notion in itself. Therefore the term ‘SLOW’ has an average distinctive character.

In the contested sign, ‘TRAVELLER’ will be understood as somebody who undertakes a journey and the element ‘SLOW’ will be perceived as a modifier, qualifying the aforementioned noun. ‘TRAVELLER’ will be perceived  as less distinctive given that it will be seen as referring to the intended consumer of the relevant goods and services and that they are geared up for people who (frequently) travel. Further, for some of the services such as storage and packaging, the connection is stronger given that these are necessary services for those who travel and need to either take objects or leave them in storage.

In view of the meanings in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The common element ‘SLOW’ is also the first verbal component of the contested sign, this is particularly relevant given that consumers read from left to right and, as such, give more importance to the first parts of signs.

As to the differences due to the figurative nature of the contested sign, these are not significant given that, firstly, the stylisation of the lettering is minimal and secondly, the round circle with the letters ‘S’ and ‘T’ will be perceived as a logo reinforcing the meaning of ‘SLOW TRAVELLER’. It should also be mentioned that the figurative device, despite its positioning at the top of the mark, is not dominant. Indeed, all of the elements are more or less on par and in this respect it should be considered that 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;

These aforementioned considerations will be taken into account in the comparison.

Visually, the earlier right is wholly included in the contested sign, as the first verbal component and indeed may be considered as the most distinctive verbal element. Considering that the figurative differences do not lead to a significant difference, the signs are visually similar to at least an average degree.

Aurally, the earlier right is ‘SLOW’ whilst the contested mark is ‘SLOW TRAVELLER’. Even if the contested mark includes the letters ‘S’ and ‘T’ these are within a figurative element, are stylised and will be taken as a reference to the aforementioned ‘SLOW TRAVELLER’. As such it is not likely they will be referred to aurally. Patently, the pronunciation of the signs only differs in the second verbal component which clearly lengthens the sign in comparison and to this extent alters the rhythm and intonation. However, also bearing in mind the distinctiveness and positioning, the signs are similar to an average degree. 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and they are considered similar to an average degree. 

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. 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 direct 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

With the exception of money holders in Class 16, all the goods and services are identical or similar to varying degrees and are directed at both the public at large and business consumers. The degree of attention may vary from average to high.

The comparison of signs illustrates the commonalities and differences between the signs and they were found to be similar to an average degree.

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).

Considering the similarities between the signs and the principle of interdependence described above, the Opposition Division finds that there is a likelihood of confusion as consumers may believe the contested sign is a brand variation of the earlier mark. In this sense, account is also 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). Additionally, even where only a low degree of similarity between the goods and services was found, this is counterbalanced by the similarities between the signs, as described above.

In view of the foregoing, 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 EUTM No 9 895 269. 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.

For the sake of completeness, it remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘SLOW’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion in so far as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

To substantiate such a claim, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. However, the opponent did not submit any proof of use and as such it is not necessary to assess this issue and the argument is dismissed.

It follows from the above that the contested trade mark must be rejected for all the goods and services with the exception of money holders in Class 16 given that these were found 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 goods cannot be successful.

The opponent also invoked:

• European Union trade mark No 10 497 428 ‘SlowTime’ registered for goods and services in Classes 16, 35 and 41.
• European Union trade mark No 11 852 589 ‘SlowTravel’ registered for services in Classes 35 and 41.
• European Union trade mark No 9 580 549 ‘SlowEnergy’ registered for goods and services in Classes 32, 35, 37, 39, 40 and 42.

These earlier rights cover goods and services included in the earlier mark used for the purposes of comparison and as such the outcome could be no better.

The examination will proceed in relation to Article 8(5) EUTMR for the goods found dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

The Opposition Division will proceed directly to the point concerning reputation.

1. Reputation

According to the opponent, the earlier trade marks have a reputation in the European Union for all the goods and services protected.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 25/11/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services protected by the marks.

The opponent submitted a range of information concerning the registration of its earlier marks as well as previous opposition decisions from the EUIPO concerning its ‘SLOW’ marks. It also submitted extracts from its own websites www.theworldinstituteofslowness.com and www.slowcoffee.com. The documents set out the beginnings and foundation of the opponent company and its ethos.

Though a number of ‘SLOW’ trade marks can be seen in conjunction with goods and services, the evidence does not demonstrate that the earlier trade marks at issue have acquired a reputation. Indeed, there is no concrete information regarding the market share held by the trade marks, there is no information about the awareness of the trade marks, the intensity of use or the size of the investment made by the undertaking in promoting the marks. All these factors have to be taken into account in order to determine whether or not the marks concerned enjoy a reputation from the standpoint of the consumers targeted by the opponent.  Furthermore, the evidence derives from the opponent itself and has a low probative value as more weight is given to materials emanating from a range of independent and impartial sources.

In short, the evidence is clearly scarce and does not support the opponent’s assertion that its ‘SLOW’ marks have achieved any amount of recognition that would lead them to being considered as having an enhanced distinctive character or reputation of any sort.

The opponent could have filed more supporting documentation, for example, declarations made by independent parties attesting as to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards, invoices and other commercial documents, audits and inspections, etc. However, since the opponent did not submit any such documentation, it cannot be proven that the marks have a higher than normal degree of distinctiveness or reputation.

The evidence is insufficient to prove reputation of the earlier marks, in view of the cumulative nature of this provision, it is redundant to analyse any further given that this condition has not been fulfilled.

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 shall 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

Martin MITURA

Vanessa PAGE

Lucinda CARNEY

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.