OPPOSITION No B 2 655 861

Schibsted Classified Media Spain, S.L., Parque De Oficinas Sant Cugat Nord, Pl. Xavier Cugat, S/N, 08174 Sant Cugat Del Valles, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Socrate, 9 Rue Archimede, 59650 Villeneuve D’ascq, France (applicant), represented by Scp Bignon Lebray Avocats, 4 rue des Canonniers, 59041 Lille Cedex, France (professional representative).

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

DECISION:

1.        Opposition No B 2 655 861 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 673 982. The opposition is based on European Union trade mark registration No 12 188 801. 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: Online employment exchange; Interactive management of job vacancies via the Internet; Storage and control of information in computerised databases; Processing of information relating to those seeking and offering jobs; Human resources management consultancy; advertisement via mobile phone networks.

Class 38: Communication of information by computer; Communication of information by electronic means, namely communication; Transmission of information, loading, publication or display of data, information, text, illustrations, images, audio and/or video via electronic media, including via the Internet, via radio and via mobile and fixed telephone networks in the field of job and employment offers, including employment bureaux; Transmission of information by computer; Transmission of information via telephone being transmission of information via mobile and fixed telephone, including via SMS and mobile telephone applications; Transmission of information on various subjects, including online and via global computer networks; Web telephony, communications via mobile telephone, wireless mobile telephony, telephony services via the Internet.

The contested services are the following:

Class 35: News clipping services, solely in the context of training relating to journalism and the media.

Class 38: Press agencies, solely relating to journalism and the media and to training on these subjects; News agencies, solely relating to journalism and the media and to training on these subjects.

Class 41: Providing of training, education and teaching solely relating to journalism and the media.

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

The term ‘including’ in the opponent’s list of services indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). On the other hand, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

In the same sense, the word ‘solely’ of the applicant’s list of services is exclusive and restricts the scope of all the services for which registration is sought to only (the context of) journalism and the media and to training on these subjects.

As a preliminary remark, it is to be noted that 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.

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 services in Class 35, namely news clipping services, solely in the context of training relating to journalism and the media, consist of providing clients with copies of media content intended to be used for training purposes in the fields of journalism and the media. Such services are most probably intended for use in schools or, more generally, organisations that train students in the fields of journalism and the media.

On the other hand, the services for which the earlier mark is registered consist of, inter alia, management, processing and consultancy services in the field of employment, job applications and/or human resources. Such services are intended to allow job seekers to connect with undertakings offering jobs and vice versa. They are, therefore, fundamentally different in nature and purpose from the contested services. They do not target the same public as the contested services and they are neither in competition with them nor complementary to them. Hence, they are dissimilar.

Moreover, the earlier mark also covers advertisement via mobile phone networks. In that regard, it must be observed that advertising services 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. Therefore, they have a nature and a purpose that is clearly different from the nature and purpose of the contested news clipping services. Moreover, they do not target the same public and they are neither in competition nor complementary. Therefore, they are dissimilar.

Finally, the earlier mark is also registered for storage and control of information in computerised databases. In that respect, the Opposition Division considers that, although, as the opponent claims, the provision of the contested news clipping services might require storage and control of information in computerised database, this does not imply that the contested services are included therein but at most complementary to the services covered by the earlier mark.

In fact, such complementarity is not even sufficiently pronounced to conclude that these goods are similar, since they differ in all remaining relevant factors. In particular, they do not have the same nature or purpose and they do not usually originate from the same undertakings. Therefore, from the relevant public’s point of view, the services in question are dissimilar (see, to that effect, 12/07/2007, T-105/05, Waterford Stellenbosch, EU:T:2007:170, § 34, confirmed by judgment of 07/05/2009, C-398/07 P, Waterford Stellenbosch, EU:C:2009:288, § 45).

These contested services are also different from the earlier services in Class 38, since they differ in all relevant factors, namely their nature and intended purpose, as well as their end users, providers and distribution channels, and they are obviously neither in competition nor complementary.

As a result, it must be concluded that the contested services in Class 35 are dissimilar to the services covered by the earlier mark.

Contested services in Class 38

As regards the contested services in Class 38, namely press agencies, on the one hand, and news agencies, on the other hand (both solely relating to journalism and the media and to training on these subjects), it must be noted that the services of press and news agencies classified in Class 38 relate to the transmission of news from third-party entities, which are involved in the process of collecting news from its place of origin and disseminating it to the eventual listener, watcher or reader. On the other hand, the services covered by the earlier mark in the same class include the transmission of information on various subjects, including online and via global computer networks. The contested services in Class 38 are, therefore, included in the broad category of transmission of information on various subjects, including online and via global computer networks covered by the earlier mark and, hence, are identical to them.

Contested services in Class 41

As regards the comparison of the contested services in Class 41, namely providing of training, education and teaching solely relating to journalism and the media, with the services for which the earlier mark is registered, the Opposition Division notes at the outset that the opponent has not made any comments. Moreover, it shall be observed that these contested services have nothing in common with the services for which the earlier mark is registered in Classes 35 and 38. Indeed, these services differ in their nature and their intended purpose as well as in their end users, providers and distribution channels, and they are neither in competition nor complementary. Hence, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of services 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 services in question.

In the present case, the services found to be identical are specialised services that are mainly directed at business customers with specific professional knowledge or expertise and who, by definition, have a higher level of attention than the average consumer (12/01/2006, T-147/03, QUANTUM, EU:T:2006:10, § 62). Although it cannot be excluded that the relevant services also target average consumers, taking account of the fact that they are specialised, that they are not bought on a daily basis and that they can be quite expensive, it has to be considered that average consumers will also display a higher than average degree of attentiveness at the time of purchasing them (01/03/2016, T-61/15, 1e1, EU:T:2016:115, § 26).

Therefore, in the present case, the relevant public is composed of professionals and average consumers, both of which groups will display an enhanced degree of attentiveness at the time of purchasing the services at issue.

3. The signs

	IJT
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).

Neither the earlier mark nor the contested sign has a meaning for the relevant public.

As regards the earlier mark, it consists of the letter combination ‘IJ’, written in white against a background of a blue square with rounded corners. The Opposition Division notes at the outset that it might actually be perceived by part of the public as a purely figurative mark depicting stylised quotation marks or the ‘pause’ symbol. Since the letter combination ‘IJ’ has no relation to the relevant services, it has an average degree of distinctive character.

In addition, the Opposition Division concurs with the opponent’s view that the word elements of the earlier mark are more distinctive than its figurative elements, since, as it points out, in accordance with settled case-law, 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 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). As a result, the blue square on which the word element of the mark is displayed and the typeface in which it is depicted have to be considered less distinctive than the word element.

Therefore, when encountering the earlier mark, it is likely that the relevant public will pay more attention to the combination of letters ‘IJ’ than to the particular typeface and colour in which it is depicted or to the blue background on which the combination of letters is displayed. However, since such figurative elements correspond to the particular graphic depiction of the said word element, it will not be dissociated from it and, hence, will probably not be overlooked by the relevant public.

As regards the earlier mark’s most dominant elements, it has to be observed that, although the letter ‘J’ is slightly bigger than the letter ‘I’, it is placed in the second position in the sign and, therefore, it cannot be considered that it will attract the relevant public’s attention more than the letter ‘I’. Therefore, the earlier mark has no elements that could be considered more dominant (eye-catching) than other elements.

As regards the contested sign, it is sufficient to note, first, that it is a word mark consisting of the combination of letters ‘IJT’, which means that it cannot be dominated by any of its elements, and, second, that none of these letters is more distinctive than another.

Before carrying out the comparison of the signs at issue, it has to be pointed out that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its individual elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the two letters of which the earlier mark’s word element consists, namely ‘IJ’. However, they differ in the last letter, ‘T’, of the contested sign, which has no counterpart in the earlier mark.

In that regard, it must be recalled that the principle according to which consumers generally pay greater attention to the beginning of words than to their end cannot apply to all cases. Moreover, it cannot invalidate the principle according to which the appreciation of the similarity of the marks in question must be based on the overall impression given by the marks, since the average consumer normally perceives a mark as a whole and does not proceed to examine its different details (see 15/07/2011, T-220/09, ERGO, EU:T:2011:392, § 31 and the case-law cited therein).

In addition, as explained above, in spite of being less distinctive than the word element ‘IJ’, the figurative elements of the earlier mark, namely the blue square with rounded corners in the middle of which the letters ‘IJ’ are displayed and the white typeface in which they are written, will not be overlooked and further differentiate the signs from a visual point of view.

This is supported by the fact that, as explained above, the earlier mark could be perceived by part of the relevant public as a figurative device rather than as a combination of letters.

In light of the above, and taking into account that both signs are short, it must be concluded that the signs are visually similar to a low 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 ‘IJ’, present identically in both signs. It differs, however, in the sound of the last letter, ‘T’, of the contested sign, which has no counterpart in the earlier mark.

Moreover, taking into account that both signs will most probably be pronounced letter by letter, it can be safely considered that, irrespective of the different pronunciation rules in different parts of the relevant territory, the last letter, ‘T’, of the contested sign will provide the sign with a rhythm that is quite distinct from the rhythm produced by the pronunciation of the letters ‘I’ and ‘J’ alone, which constitute the earlier mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a less distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The earlier mark comprises two letters, that is, ‘IJ’, on a blue square background, while the contested sign comprises three letters, namely, ‘IJT’. Consequently, both are short marks and it is considered that the fact that they differ in one letter is a relevant factor when evaluating the likelihood of confusion between the conflicting signs (see 23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

Indeed, small differences may frequently lead to a different overall impression in short words (see, to that effect, 06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 48; and 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39).

Moreover, the contested services are partly dissimilar and partly identical to the services covered by the earlier mark.

Since the similarity of the goods and/or services covered by the signs in dispute is one of the necessary conditions for a finding that there is a likelihood of confusion, there cannot be any risk that the contested sign is confused with the earlier mark for the contested services in Classes 35 and 41.

As far as the contested services in Class 38 are concerned, the Opposition Division considers in light of the above, and in particular the low degree of similarity between the signs and the enhanced degree of attentiveness that the relevant public will display when purchasing them, that a likelihood of confusion on the part of the public can also be safely excluded for such services, in spite of the identity between them and the services for which the earlier mark is registered in the same class.

Therefore, the opposition must be entirely rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.