OPPOSITION No B 2 251 315

C.Ed. Schulle Gesellschaft mit beschränkter Haftung Zylinderschloßfabrik, Friedrichstr. 243, 42651 Velbert, Germany (opponent), represented by Rieder & Partner mbB Patentanwälte – Rechtsanwalt, Corneliusstr. 45, 42329 Wuppertal, Germany (professional representative)

a g a i n s t

Ascentis, Office 4, Lancaster Business Park, Caton Road, Lancaster, Lancashire LA1 3SW, United Kingdom (applicant), represented by Brabners LLP, Horton House, Exchange Flags, Liverpool, Merseyside L2 3YL, United Kingdom (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 251 315 is upheld for all the contested goods and services.

2.        European Union trade mark application No 11 810 521 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 810 521. The opposition is based on German trade mark registration No 302 008 021 796. 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 goods and services

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

Class 16:        Unencoded service and identity cards made of plastic without integrated circuits or magnetic strips; key management books; labels (not of textile), in particular key tags, master key system plans; parts, replacement parts, and accessories, included in this class.

Class 41:        Organizing and conducting seminars, training and system instructions.

Class 45:        Security consultancy, preparation of safety concepts and locking plans within the framework of security consultancy.

The contested goods and services are the following:

Class 16:        Printed matter, certificates, printed materials, teaching materials, learning materials, qualification specifications, books, periodicals, manuals, text books, advertising materials all for the purpose of or relating to teaching, instruction or training or the testing, examination and assessment of candidates for educational and vocational achievement and for the provision of training, testing, examination and assessment services; all the aforesaid goods in the field of charities, education and skills; none of the aforesaid goods in relation to locking systems and electronic access control systems.

Class 41:        Education and training; certification of education and training awards; certification of education and training awards for Further Education Colleges, professional training providers, schools, universities, employers and organisations; design of educational courses, examinations and qualifications; provision of qualifications and awards; electronic and online publication of materials namely learning materials and qualification specifications; assessment and examination services; provision of examinations and other forms of assessment leading to qualifications; certification of education and training awards; accreditation and certification in relation to examinations and other forms of assessment; curriculum development relating to the development and specification of standards, practices, syllabuses and accreditation systems; publication of printed matter; providing non-downloadable on-line electronic publications; publication of electronic books and journals on-line; publishing by electronic means; provision of information, consultancy and advice relating to the aforesaid services; all the aforesaid services in the field of charities, education and skills; none of the aforesaid services relating to locking systems and electronic access control systems.

Class 45:        Certification services; validation services; certification and validation services relating to examination and assessment of candidates for educational and vocational achievement and for the provision of training, testing, examination and assessment; all the aforesaid services in the field of charities, education and skills; none of the aforesaid services relating to locking systems and electronic access control systems.

The list of contested goods and services contains the following limitation: all the aforesaid goods/services in the field of charities, education and skills; none of the aforesaid goods/services in relation to locking systems and electronic access control systems in all the contested classes. This limitation will be taken into account in the comparison below but, in order to avoid unnecessary repetition, it will not be included in each comparison of specific goods and services.

The Opposition Division notes the applicant’s argument that, given the above limitation, the contested goods and services cannot be considered similar to the opponent’s goods and services, taking into account the specific sub-categories and areas of commercial activity of the opponent. However, the Opposition Division considers that, although keys, locking items, etc., are specified in the opponent’s list of goods, the list of the opponent’s services in Class 41 includes no such specification.

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 contested printed matter, certificates, printed materials, teaching materials, learning materials, qualification specifications, books, periodicals, manuals, text books, advertising materials all for the purpose of or relating to teaching, instruction or training or the testing, examination and assessment of candidates for educational and vocational achievement and for the provision of training, testing, examination and assessment services are essential for the opponent’s organizing and conducting seminars, training and system instructions. Therefore, these goods and services are complementary. This is because in order to supply educational services it is both helpful and usual to use educational printed materials, teaching materials, learning materials, etc. Service providers offering any kind of course or seminar often hand out these goods to participants as learning supports. Furthermore, the specification of the contested goods explicitly states that the purpose of the contested goods is, inter alia, teaching, instruction or training. Therefore, the Opposition Division is of the view that, in the present case, relevant points of contact exist also between the opponent’s services and the contested goods, such as certificates and advertising materials, which are not typically used in relation to the opponent’s services.

Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and given that the goods complement the services, these goods and services are considered similar.

Contested services in Class 41

The contested education and training; design of educational courses, examinations and qualifications; provision of qualifications and awards; assessment and examination services; provision of examinations and other forms of assessment leading to qualifications; curriculum development relating to the development and specification of standards, practices, syllabuses and accreditation systems; provision of information, consultancy and advice relating to the aforesaid services are included in or overlap with the broad category of the opponent’s organizing and conducting seminars, training and system instructions. Therefore, they are identical.

The contested providing non-downloadable on-line electronic publications; provision of information, consultancy and advice relating to the aforesaid services are similar to the opponent’s organizing and conducting seminars, training and system instructions as they can have the same producers, public and distribution channels. Furthermore, they are complementary.

The contested certification of education and training awards; certification of education and training awards for Further Education Colleges, professional training providers, schools, universities, employers and organisations; certification of education and training awards; accreditation and certification in relation to examinations and other forms of assessment; provision of information, consultancy and advice relating to the aforesaid services are similar to a low degree to the opponent’s organizing and conducting seminars, training and system instructions as it is rather common on the market that certification institutions also organise and conduct, for example, preparatory courses. The services under comparison have the same providers, relevant public and distribution channels.

The contested publication of printed matter; publication of electronic books and journals on-line; publishing by electronic means; electronic and online publication of materials namely learning materials and qualification specifications; provision of information, consultancy and advice relating to the aforesaid services are similar to a low degree to the opponent’s organizing and conducting seminars, training and system instructions as they can have the same distribution channels. Furthermore, they are complementary.

Contested services in Class 45

The contested certification services; validation services; certification and validation services relating to examination and assessment of candidates for educational and vocational achievement and for the provision of training, testing, examination and assessment are similar to a low degree to the opponent’s organizing and conducting seminars, training and system instructions as it is rather common on the market for certification institutions also to organise and conduct, for example, preparatory courses. The services under comparison have the same providers, relevant public and 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 or similar are specific goods and services directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the nature and price of the particular goods and services concerned and considering that, for example, in relation to education services the average consumer is normally rather attentive.

3. The signs

CES
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a word mark, ‘CES’, which has no meaning for the relevant public in Germany and is, therefore, distinctive. The Opposition Division notes the applicant’s argument that the earlier mark would have a clear conceptual meaning (supported by an extract from the opponent’s website) but considers that the forming of such an association would require prior knowledge that the relevant consumers cannot be expected to have when encountering the mark.

The contested sign is a figurative mark consisting of the word ‘CES’ in grey stylised upper case letters forming a circular shape, the word ‘Solutions’ in grey title case typeface underlined by a grey figurative element. Although the letters ´CES´ are indeed highly stylised, as argued by the applicant, they are clearly legible and are, furthermore, the most eye-catching element as they have a bigger size and appear at the beginning of the sign.

As regards the element ´CES´, the considerations set out above in relation to its meaning and distinctiveness apply equally here. Part of the public in the relevant territory will perceive the element ‘SOLUTIONS’ as the English word meaning, inter alia, ‘the action or process of solving; the state, condition, or fact of being solved’ (information extracted from the Oxford English Dictionary at www.oed.com) and will, therefore, perceive it as a laudatory term highlighting a quality of the goods and services in question, namely that they are intended to provide solutions. Consequently, the ability of this element to serve as an indicator of commercial origin will be rather limited. However, a part of the public may not associate it with any meaning, therefore, for this part of the public, it will be distinctive.

Furthermore, the contested mark comprises a  figurative element that, in conjunction with the stylised element ‘CES’, may be perceived as resembling a key (in which case it would be distinctive as such, as it is not descriptive, weak or allusive in a manner that would materially affect its distinctiveness) or that may be seen as an abstract figurative element of rather decorative nature. Either way, the figurative element will have less importance in the overall perception of the sign than the verbal elements because, 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).

Visually, the signs coincide in the element ‘CES’ which is included in its entirety in both signs. However, they differ in the stylisation and colour of the letters in the contested sign, the word ‘SOLUTIONS’, which is present only in the contested mark but is weak for a part of the public, and the figurative elements described in the previous section.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. As the word ‘CES’ forms the beginning of the contested sign and is distinctive, the consumers will naturally focus on this element.

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CES’. The pronunciation differs in the sound of the second word ‛SOLUTIONS’ of the contested sign, which has no counterpart in the earlier mark; it is, however, weak for a part of the public.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, for the part of the public, for which neither of the signs will be associated with a meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For the part of the public that will perceive a meaning in the contested sign, the signs are conceptually not similar.

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.

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, the goods and services are identical or similar to various degrees and the signs are visually similar to at least a low degree and aurally similar to at least an average degree.

The signs have the distinctive word ‘CES’ in common and the entire earlier mark is incorporated at the beginning and as an independent and distinctive element of the contested sign. The additional verbal component ‘SOLUTIONS’ of the contested mark, and the figurative elements described in section c) that are not present in the earlier sign, even if distinctive, would be insufficient to safely dispel a likelihood of confusion.

Bearing in mind the foregoing, the Opposition Division considers that when encountering the contested EUTM in the context of identical or similar (including similar to a low degree) goods and services, even highly attentive consumers, will perceive it merely as a new version of the opponent’s earlier trade mark and will be led to believe that goods and services in question originate from the same manufacturer or related manufacturers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 008 021 796.

It follows that the contested trade mark must be rejected for all the contested goods and services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Denitza STOYANOVA-VALCHANOVA

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.