OPPOSITION No B 2 665 381

Educa Borras S.A., Osona, 1 Políg. Ind. Can Casablancas, 08192 Sant Quirze del Vallès (Barcelona), Spain (opponent), represented by Isern Patentes y Marcas, S.L. Avenida Diagonal, 463 bis, 2° piso 08036 Barcelona,  Spain (professional representative)

a g a i n s t

Edu-Consulting International LTD, 16 Hamelacha st. Rosh Haayin, Park Afek  4809900 Israel (holder), represented by Monereo Meyer & Marinel-Lo Abogados SL, Paseo de Gracia 98 4º, 08008 Barcelona, Spain (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 381 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 248 389. The opposition is based on the following earlier rights:

• Spanish trade mark registration No 1 723 322

• European Union trade mark registration No 39 552

• European Union trade mark registration No 547 737

The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 holder establishes due cause for the use of the contested trade mark.

In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade marks have a reputation in Spain.

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 EU was designated in the contested international registration on 01/12/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 9:         Teaching apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images; information treatment (data processing) equipment and computers.

Class 16:         Instructional and teaching material (except apparatus); paper, cardboard, goods made from paper and cardboard not included in other classes; printed matter, publications.

Class 28:         Games and playthings.

Class 41:         Education and entertainment services; publication of texts services.        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 11/08/2016 the opponent submitted the following evidence:

• Screenshot of Google search results for ‘EDUCA’, showing the opponent’s website as the first result from 9.430.000 websites
  
• Printouts from websites such as clubparenting.com, bloggersandfamily.com, pequesymas.com, showing toys with the earlier EUTMs, printouts of the Facebook page of the opponent with almost 20.000 likes
  
• Advertisements in Spanish newspapers such as “El País Semanal”, “El Mundo”, “Supertele”, “Futbolísta”, “Deportes telecinco”, “Supertelele” in 2007
  and 2008 showing sometimes the term “EDUCA”, the term “Educa Borras”, or the sign , or , other times, only , in connection with toys.
  
• Several Spanish-language invoices issued to the opponent for advertisements of products for the years 2007 to 2013, for tens of thousands of Euros

• 
  Spanish-language toy catalogues showing the sign  
• 
  Hundreds of invoices issued between 2008-2013 by the opponent to
  different clients, showing sales of toys for several thousand Euros each.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite the large volumes of evidence showing extensive use of the trade marks, the documents provide little information on the extent of such use in the market. This is because the opponent did not provide any information referring to its position and share in the relevant market or to the overall size of that market, and, therefore, the Opposition Division cannot establish whether or not the invoices correspond to a substantial presence in the market.

While the invoices contain information on large sales volumes and the opponent has also made significant expenditures concerning promotions, the evidence falls short of giving sufficient information that would allow the Opposition Division to draw solid conclusions on whether, a result of these sales and promotions, the earlier marks were known by a significant part of the relevant public.

In other words, there is no information as to the degree of recognition of the earlier marks by the relevant public. Google search results and Facebook likes cannot be taken into consideration as these platforms are available all over the world and therefore are not valid indicators of the exposure and knowledge of the relevant public in Spain. Even if, as the opponent states and demonstrates, the mark appears in the main Spanish newspapers, this alone is not a good indicator of public recognition either, as newspapers generally cover a large variety of content and their readers are not expected to retain every single piece of information.  

The opponent could have demonstrated, for instance by conducting a survey, the percentage of the relevant consumers concerned who are able to identify the goods and services on the basis of the trade marks.

Consequently, while demonstrating a large extent of use and significant investments in promotion, in the absence of information on the market share and the public’s recognition, the opponent did not succeed in clearly establishing all the facts necessary to safely conclude that the mark is known by a significant part of the public.

It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

The materials submitted do not support, without resorting to probabilities and assumptions, a conclusion that the earlier marks were known by a significant part of the relevant consumers for the goods and services concerned. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the earlier European Union trade marks the opposition is based on have a reputation.

Moreover, it is also noted that the opponent did not provide any facts, arguments or evidence which could support the conclusion that 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 marks.

The opponent, notably, only claimed that use of the contested trade mark would take unfair advantage of the repute of the earlier trade marks as the direct, “inevitable” consequence, and for the sole reason that the marks have reputation.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

It does not evidently follow from the mere existence of a mark’s reputation that any subsequent identical or similar registration would take unfair advantage of such repute. Aside from submitting evidence to establish reputation, and making the above general statements, the opponent did not submit any facts, arguments or evidence that could support the claim of unfair advantage or detriment to the distinctive character of the earlier trade marks.

In conclusion, it has not been established that the earlier trade marks have a reputation, nor has it been established that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks as required by Article 8(5) EUTMR. As two of the necessary requirements are not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR.

The examination of the opposition will thus proceed with the other ground invoked, Article 8(1)(b) EUTMR.

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

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

1. The goods

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

Spanish trade mark registration No 1 723 322

Class 28: Games and playthings.

European Union trade mark registrations No 39 552 and No 547 737

Class 9: Teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; information treatment (data processing) equipment and computers.

Class 16: Instructional and teaching material (except apparatus); paper, cardboard, goods made from paper and cardboard (not included in other classes); printed matter; publications.

Class 28: Games and playthings.

Class 41: Education and entertainment services; publication of texts services.

The contested goods are the following:

Class 9: Teaching and instructional apparatus and instruments; educational computer software; educational software for children; interactive computer software for use in teaching children.

Class 28: Games and playthings; electronic games for the teaching of children; portable games with displays; portable games with liquid crystal displays; game apparatus adapted for use with an external display screen or monitor; electronic games consoles adapted for use with an external display screen or monitor; controllers for game consoles; electronic educational game machines for children; toy building blocks capable of interconnection; board games; toys; game consoles; dolls; educational card games; playing cards; manipulative puzzles.

Contested goods in Class 9

Some of the contested goods are identical to goods covered by the earlier European marks in Class 9 and similar to goods covered by the earlier Spanish mark in Class 28. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical or similar to those of the respective earlier marks.

Contested goods in Class 28

Games and playthings identically appear on all lists of goods, and the remaining contested goods are included in the broad categories of games and playthings. Consequently, the goods are identical.

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 presumed or found to be identical or similar are directed at the public at large.  The degree of attention is considered to be average.

3. The signs

(1) EUTM No 39 552 (2) EUTM No 547 737 (3) ES TM No 1 723 322
Earlier trade mark	Contested sign

The relevant territory is the European Union for the EUTMs (1) + (2) and Spain for the Spanish earlier mark (3), respectively.

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 earlier EUTM (1) is a figurative mark consisting of the word “EDUCA” written in black upper case letters within a circle consisting of red and orange stylised figures holding hands. The earlier EUTM (2) contains the same elements, within a white circle which is placed on a red rectangle.

The earlier Spanish trade mark consists of the cartoon figure of a boy drawn with many details in a black background, above the word “EDU” written in white capital letters.

The contested sign consists of the word "EduQuest"; the E and Q are capital letters while the rest of the letters are lowercase; the E, d and u are blue; the Q is light blue and has a beige coloured safari hat with a brown stripe across one side of the brim; the second u is green; the e is yellow; the s is orange and the t is red; a yellow pencil leans on the capital E at a 45 degree angle, tip pointed toward left and eraser leaning on the E.

None of the signs have elements which would be more eye-catching, i.e. dominant, compared to other elements.

“EDUCA” in the earlier EUTMs or the term “Edu” in the earlier Spanish mark or in the contested sign are likely to be associated with education. This will be the case in particular for the English, Spanish, French, Portuguese, Italian and Romanian-speaking relevant public due to very close equivalents.

Given that the goods at hand are games, playthings, teaching and instructional equipment, educational software, where the above meanings of “EDUCA”/“Edu” will immediately be perceived as referring to their educational purpose, these terms are weak elements of the marks for the public recognising their meanings. The same applies to the image of the pencil in the contested mark, which merely reinforces the concept of education.

It cannot be excluded that there is a part of the relevant public which will not associate the terms “EDUCA”/”EDU” with education and will find these words distinctive. This will hold true for part of the Slovak, Slovene and Hungarian-speaking relevant public as their equivalents for the word “education” are very different.

“Quest” in the contested mark is an English word referring to a long and difficult search for something; this might also be perceived by the French-speaking relevant public due to the similar equivalent “quête”. For the comparison with the Spanish earlier mark it is worth noting that “Quest” is meaningless in Spanish. In any event, this term has no relation to the goods at hand and its distinctiveness is normal.

Visually, the signs coincide in “EDU”, although it is a weak element for part of the relevant EU public, including the Spanish public.

For the part of the EU public which does not perceive any meaning in the verbal elements of the earlier signs or the contested sign, the signs will also coincide in “EDU”, however this letter sequence is part of a longer word “EDUCA” in the earlier EUTMs while it is a visually clearly separable element in the contested sign, due to distinctions in typeface, colour, and the safari hat placed on the following “Q” letter.

Given the weak distinctive character of ‘EDU’, or the above mentioned distinction regarding the role of the coinciding letter sequence in the signs, it is consequently not that relevant that this sequence of the same three letters is placed at the beginning of the signs, contrary to the opponent’s claim.

The signs differ in their typefaces, colours, the circle formed by figures in the earlier signs (1)-(2), the cartoon boy of the earlier Spanish mark, and the images of the pencil and the hat.

Therefore, 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 “EDU” present identically in all the signs, although this coincidence is placed in weak elements for part of the public. Therefore, it does not have a lot of impact that in some of these languages the letter “C” of the earlier sign and the letter “Q” of the contested sign will equally be pronounced as “K”.

In Slovak, Slovene and Hungarian, the letters “C” and “Q” will be pronounced differently, and therefore the signs coincide in the sounds of three letters out of the five or eight. It should also be noted that the public will be prone to acknowledge the clear visual distinction of the term “Edu” with a small pause between “Edu” and “Quest”, while the earlier signs (1)-(2) will be pronounced as one word, “EDUCA”.

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

Conceptually, for the part of the public not finding a conceptual link with education, the signs are conceptually not similar, as there are many differing concepts, such as the circle of stylised figures in the earlier EUTMs, the safari hat and, for the sake of noting, the weak element depicting a pencil.  

For the part of the public perceiving a reference to education, the signs will be conceptually similar, albeit to a low degree given that the coinciding concept concerns a weak element while there are many different concepts in both signs, including that of the cartoon boy in the earlier Spanish mark.

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 European Union trade marks have a reputation, but as seen above, this has not been proven.

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

5. Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

In the present case, for a large part of the relevant public, including the Spanish-speaking public, the signs coincide in a weak element, “EDU”, while there are many additional distinctive elements that help to differentiate between the signs.

Even for the part of the public which sees no meaning in “EDUCA”/”EDU”, the representation of the coinciding element is different in the two signs, forming an independent element in the contested sign while being inseparable part of the earlier marks. In addition, the signs are further set apart by differing concepts.

In either scenario, the signs contain sufficient additional differing words, sounds and concepts to enable the reasonably well informed and reasonably observant and circumspect relevant public to safely distinguish identical or similar goods of the two different undertakings.

Considering all the above, even assuming that the goods are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.