OPPOSITION DIVISION

OPPOSITION No B 1 952 939

Informa IP GmbH, Baarerstrasse 139, 6300 Zug, Switzerland (opponent),

represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge

CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Informa D & B, S.A., Av. de la Industria 32, 28010 Alcobendas, Madrid, Spain

(applicant), represented by Aspamar Asesores, S.L., Calle de Miguel Ángel, 16 – 2º

materials, books, newspapers, magazines.

2. European Union trade mark application No 10 134 328 is rejected for all the

above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

Republic, Denmark, Germany, France, Italy, Austria, Romania, Slovakia, Finland and

Sweden, and Benelux trade mark registrations No 651 542 and

No 650 489 ‘INFORMA’. The opponent invoked Article 8(1)(b) EUTMR.

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SUBSTANTIATION — Benelux trade mark registration No 651 542

According to Article 76 (1) EUTMR (in the version in force at the time of

commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings

before it the Office will examine the facts of its own motion; however, in proceedings

relating to relative grounds for refusal of registration, the Office is restricted in this

opportunity to submit 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 (in the version in force at the time of

commencement of the adversarial part), within the period referred to above, the

opposing party must also file evidence 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 that is not a

European Union trade mark, the opposing party must submit a copy of the relevant

In the present case, the notice of opposition was accompanied by a printout from the

Benelux Intellectual Property Office database regarding earlier Benelux trade mark

registration No 651 542; the printout is not in the language of the proceedings. The

earlier mark is depicted on the printout as follows: .

On 01/02/2012, the opponent was given two months, commencing after the end of

the cooling-off period, to submit the required evidence and translations thereof (in

order to prove the existence, validity and scope of protection of its earlier mark). After

an extension of the cooling-off period and suspension of the proceedings, the time

limit was extended and finally expired on 24/04/2017.

On 24/04/2017, the opponent submitted an excerpt from the Benelux Intellectual

commencement of the adversarial part) that, if the opponent has submitted no

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indication during the opposition period that the earlier mark is in colour (i.e. a

depiction in colour or a colour claim), and has only submitted a colour representation

to the Office in order to substantiate its opposition, the opposition based on that

earlier right will be rejected as not substantiated.

According to Rule 20(1) EUTMIR (in the version in force at the time of

adversarial part), the opposing party has not proven the existence, validity and scope

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.

a) The goods and services

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

European Union trade mark registration No 8 617 045

Class 16: Paper and cardboard; book binding material, stationery, adhesives for

stationery or household purposes, artists’ materials, paint brushes, typewriters,

plastic materials for packaging (not included in other classes), printers’ type, printing

newsletters and books, publication of written courses.

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International trade mark registration No 728 627 designating Sweden

Class 16: Paper, cardboard and goods made from these materials, not included

in other classes; periodicals; printed instruction and teaching aids; newsletters;

printed matter, including printed matter containing data from files.

Class 41: Organization of seminars, courses and congresses; publication and

Class 16: Paper, cardboard and products manufactured therefor, unless

included in other classes; magazines; written instructional and teaching material;

newsletters; printing, including those containing data from files.

Class 35: Database management; providing data from address files.

Class 41: Organization of seminars, courses and congresses; publishing and

editing periodicals, newsletters and books; publishing and editing of written courses.

The contested goods and services are the following:

Class 16: Publications, catalogues, pamphlets, printed matter, teaching

communications by computer terminals, communications via global computer

networks.

Class 42: Consultancy in the field of computers, computer programming.

An interpretation of the wording of the lists of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s lists of goods and services, indicates that

the specific goods and services are only examples of items included in the category

and that protection is not restricted to them. In other words, it introduces a

Nu-Tride, EU:T:2003:107).

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.

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Contested goods in Class 16

Printed matter; teaching materials are identically contained in the lists of goods of the

earlier international registration and the contested sign (including synonyms).

The contested publications, catalogues, pamphlets, books, newspapers, magazines

registration. The goods are considered identical.

offered by institutions such as banks for the facilitation of various financial

transactions and other related activities in the world of finance. These are not the

producers/providers of the opponent’s goods (including goods such as a variety of

as business management, administration and office functions, and education,

entertainment, sports and cultural services). The goods and services under

comparison have nothing relevant in common. They do not have the same nature,

purpose or method of use. They are neither complementary nor in competition and

are furthermore provided through different distribution channels. It follows that they

are dissimilar.

The earlier EUTM is registered for the entire class headings of Classes 35 and 41 of

not have the same producers or distribution channels.

Contested services in Class 38

The contested telecommunications, transmission of messages by computer,

communications by computer terminals, communications via global computer

networks are services that relate to providing the means to allow one person to talk

person in oral or visual communication with another and providing a modern means

of communication to do so. The contested services are considered dissimilar to all of

the opponent’s goods and services, as they have a completely different nature,

same target public, this argument alone is not sufficient for a finding of any degree of

these additional services (e.g. auctioneering; business investigations in Class 35;

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method of use. Furthermore, they are neither complementary nor necessarily in

competition and do not have the same producers or distribution channels.

Contested services in Class 42

The contested consultancy in the field of computers, computer programming

specialising in computer technology, which are not the producers or providers of the

complementary nor in competition. It follows that they are dissimilar.

Classes 35 and 41 of the ninth edition of the Nice Classification. However, even if the

earlier mark covered all the services in the entire alphabetical lists of these classes,

these additional services (e.g. auctioneering; business investigations in Class 35;

services would be dissimilar, as they do not have the same nature, purpose or

method of use. Furthermore, they are neither complementary nor necessarily in

competition and do not have the same producers or distribution channels.

Since all the goods found to be identical are covered by, inter alia, earlier

international trade mark registration No 728 627 designating Sweden, the

assessment of a likelihood of confusion will continue on the basis of that earlier mark.

according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at

large. The degree of attention will be average when choosing the relevant goods.

c) The signs

The relevant territory is Sweden.

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 consisting of the sole element ‘INFORMA’. This

element does not exist as a word in Swedish. The relevant public, however, is likely

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to perceive it as a reference to the Swedish word ‘information’, as in ‘acquired

knowledge’. Bearing in mind that the relevant goods are ‘teaching aids; printed

matter’, this element alludes to the purpose of the goods, namely to provide

information. Therefore, it is considered to be weaker than average for the relevant

goods.

earlier mark and reference is made to the conclusion reached above regarding its

the relevant goods are ´teaching materials and variety of printed matter´, the element

‘RATING’ is considered non-distinctive for these goods as it refers to the subject

matter of the relevant goods.

Consumers generally tend to focus on the beginning of a sign when they encounter a

trade mark. This is because 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. Therefore, the fact that the sole element of the earlier mark is included as

the first element of the contested sign is of material importance when assessing the

likelihood of confusion between the signs at issue.

Visually and aurally, the signs coincide in the element ‘INFORMA’ (and its sound).

distinctiveness of the elements of the signs, the signs are considered visually and

aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks and their elements. The element ‘INFORMA’ of both

signs will be perceived by the relevant public as a reference to ‘information’.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

distinctiveness as result of its long-standing and intensive use in the relevant territory

must be taken into account in the assessment of likelihood of confusion. Indeed, the

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more distinctive the earlier mark, the greater will be the likelihood of confusion, and

therefore marks with a highly distinctive character, because of the recognition they

possess on the market, enjoy broader protection than marks with a less distinctive

character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted excerpts from the databases of several Member States,

trade mark has acquired a high degree of distinctiveness through use. The existence

to demonstrate that the earlier mark has acquired a high degree of distinctiveness

through use.

distinctiveness per se. Considering what has been stated above in section c) of this

decision, the distinctiveness of the earlier mark must be seen as lower than average

for all of the goods in question, namely teaching aids; printed matter, including

printed matter containing data from files in Class 16.

e) Global assessment, other arguments and conclusion

to be identical to the earlier ones from succeeding. While the distinctive character of

the earlier mark must be taken into account when assessing the likelihood of

confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a

number of elements entering into that assessment, and it is established case-law

that, even in a case involving an earlier mark with a weak distinctive character, there

may be a likelihood of confusion on account, in particular, of a similarity between the

signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air,

Furthermore, it was also established above that the signs are visually, aurally and

conceptually similar to a high degree. Bearing in mind that the earlier mark is

element ‘RATING’ of the contested sign, it is highly conceivable that the relevant

Spanish trade mark registrations, containing the word ‘INFORMA’, and for which it

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According to case-law, the possibility cannot be ruled out that the coexistence of two

marks on a particular market might, together with other elements, contribute to

diminishing the likelihood of confusion between those marks on the part of the

relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §

82). In certain cases, the coexistence of earlier marks in the market could reduce the

likelihood of confusion that the Office finds between two conflicting marks (judgment

before the EUIPO concerning relative grounds for refusal, the applicant for the

between the earlier marks upon which it relies and the intervener’s earlier mark on

§ 86).

In this regard it should be noted that formal coexistence in national or Union

that they coexist in the market, which could actually indicate that consumers are used

to seeing the marks without confusing them. Last but not least, it is important to note

that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of

the coexistence of other marks in the market (and possibly in the register) at

national/Union level as an indication of ‘dilution’ of the distinctive character of the

opponent’s mark that might be contrary to an assumption of likelihood of confusion.

In the case at issue the applicant’s registrations, even though containing the element

‘INFORMA’ are not identical to the contested sign. Therefore, the marks concerned

by the coexistence claim and the marks at issue are not identical. For the sake of

completeness, it is noted that the relevant market concerns the territory of Sweden

and therefore, as far as applicant’s Spanish registrations are concerned, there is no

common market to which the alleged coexistence may apply. Furthermore, even

when EUTM registrations are concerned, the applicant did not submit any evidence

Therefore, this argument of the applicant must be rejected as unfounded.

on the basis of the opponent’s international trade mark registration No 728 627

The contested services are dissimilar. As similarity of goods and services is a