OPPOSITION No B 2 213 992

English in Action Limited, Partnership House 22, Hawks Lane, Canterbury CT1 2NU, United Kingdom (opponent), represented by Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative)

a g a i n s t

English in Action S.L., Princesa Dª. Sofia 5, Local 1 – A , 28924 Alcorcon (Madrid), Spain (applicant), represented by ABG Patentes S.L., Avenida de Burgos 16D, 4ª planta , Edificio Euromor, 28036 Madrid, Spain (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 213 992 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 and services of European Union trade mark application No 11 634 482. The opposition is based on European Union trade mark registration No 8 633 257 and Austrian trade mark application No 183/2016. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade marks	Contested sign

SUBSTANTIATION OF EARLIER AUSTRIAN TRADE MARK APPLICATION Nº 183/2016:

According to Article 76(1) EUTMR, in proceedings before it, the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not an European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case the language of the proceeding is English. The opposition was filed on 10/07/2013 and was suspended on 30/07/2013 because the earlier European Union trade mark No 8 633 257 was under Cancellation No 7286 C.

On 13/10/2015 the Cancellation Division rendered its decision and declared invalid the abovementioned European Union trade mark for Classes 16 and 41. On 13/12/2015 the cancellation decision became final.

On 28/01/2016, the opposition proceedings were resumed and the opponent was given until 02/06/2016 to submit further facts, evidence and arguments in support of its petition.

On 04/02/2016, the opponent informed the Office of its intention to continue the opposition proceedings based on the remaining European Union trade mark No 8 633 257 for Class 35 and the Austrian trade mark application, partially converted from the mentioned European Union trade mark for Classes 16 and 41.

On 02/06/2016, the opponent filed several documents together, namely the request for conversion, the confirmation of partial conversion into an Austrian trade mark sent by the Office on 25/01/2016 and a printout of an extract from what seems to be the Austrian Patent Office concerning the Austrian trade mark application No 183/2016. This extract was not translated into the language of the proceedings.

The opponent submitted the required translation on 10/11/2016, that is, only after the expiry of the abovementioned time limit.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The examination of the opposition will continue on the basis of European Union trade mark No 8 633 257.

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

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

1. The goods and services

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

Class 35: Recruitment of teachers; consultancy and advertising services relating thereto.

The contested goods and services are the following:

Class 9: Teaching apparatus and equipment; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Data processing equipment and computers; CD- ROMs, Optical discs, DVDs, Phonograph records, Videotapes, Electronic publications electronically-downloadable; Computers programs.

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; Printed publication, Books, Catalogues, Magazines and periodicals and Promotional literature

Class 41: Issuing of franchises, relating to teaching, education and providing of training; Education; Providing of training; Entertainment; Sporting and cultural activities; Publication of texts (other than publicity texts).

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 Classes 9 and 16

The contested goods in Classes 9 and 16 and the opponent´s services in Class 35 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent´s recruitment of teachers; consultancy and advertising services relating thereto are services that tend to manage human resources within the education sector whereas the contested different goods can be used to improve education, instruction or teaching but they can also satisfy other needs outside the educational field. Furthermore, they are not interchangeable and, therefore, not in competition and they are not complementary. Therefore, they are dissimilar. 

Contested services in class 41

The opponent´s recruitment of teachers; consultancy and advertising services relating thereto are related to the process of finding teachers to join an educational project or organisation. These services are carried out by professionals in the field of Human Resources and presuppose particular knowledge in this field. Indeed, Human Resources services are habitually provided by different companies which are specialised and have different abilities and competencies. On the other hand, the services for which protection is claimed are essentially aimed at issuing franchises, education, training, leisure and publishing texts. They are different in nature and purpose to those related to the earlier mark.

Moreover, the contested services are not necessarily complementary nor in competition and it is unlikely that the public will think that they come from the same or economically linked undertaking.

Therefore, the contested services in Class 41 are dissimilar to the opponent’s services in Class 35.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected on the basis of the earlier European Union trade mark No 8 633 257.

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

Ric WASLEY

Alexandra APOSTOLAKIS

Richard BIANCHI

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.