OPPOSITION DIVISION

OPPOSITION No B 2 825 324

Chambre de Commerce et d’Industrie de La Rochelle, 21, chemin du Prieuré,

17000 La Rochelle Cédex 01, France (opponent), represented by Cabinet

Plasseraud, 1, rue Lafaurie de Monbadon, 33000 Bordeaux, France (professional

representative)

a g a i n s t

Excelia, S.L., Calle Musgo Nº 5, 28023 Madrid, Spain (applicant), represented by

3. The applicant bears the costs, fixed at EUR 620.

REASONS

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

the Regulations currently in force, except where expressly indicated otherwise.

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 874 589 for the figurative mark

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

transcription, composition, compilation and systematisation of written

communications and recordings, exploitation and compilation of mathematical or

statistical data, sales promotion for others, business management assistance,

industrial or commercial management assistance, exhibition sites management.

Class 41: Education, providing of training, sporting and cultural activities, arranging

and conducting of conferences, congresses and exhibitions for cultural or

educational purposes, arranging and conducting of seminars and training workshops,

publication of texts, other than publicity texts.

Class 42: Computer system design, computer software consultancy, computer

software design, creation and maintenance of websites for others, technical project

management analysis; analysis of business information; business management

consulting.

Class 37: Computer installation and repair.

Class 38: Radio, telephone, telegraph communication services.

Class 41: Tuition.

Class 42: Consultancy in the field of computers.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

goods or services are not regarded as being similar to or dissimilar from 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 goods in Class 9

The contested computer software is composed of programs, routines, and symbolic

languages that control the functioning of the hardware and direct its operation.

public and the usual producers/providers of the goods and services coincide.

Furthermore, these goods and services are complementary. Therefore, they are

considered similar.

The contested pamphlets; printed reports are similar to the opponent’s publication of

texts, other than publicity texts. They are complementary and can be

manufactured/rendered by the same entities.

The contested manuals [handbooks] are essential and thus complementary to

education in Class 41. Generally, the materials are issued by the same undertaking,

systematisation of information in computer databases insofar as this information

could consist of business data. Therefore, they are identical.

The contested updating of business information on a computer data base is, at least,

highly similar to the opponent’s systemisation of information in computer databases.

These services have the same nature and purpose. They are complementary and are

provided by the same undertakings. Moreover, they target the same relevant public.

The contested analysis of company behaviour, business management analysis;

analysis of business information are included in the broad category of, or overlap

with, the opponent’s business management assistance. Therefore, they are identical.

The contested business management consulting services are usually rendered by

companies specialising in this specific field such as business consultants. These

companies gather information and provide tools and expertise to enable their

customers to carry out their business or provide businesses with the necessary

support to acquire, develop and expand market share. The services involve activities

such as business research and appraisals, cost price analysis and organisation

consultancy. These services also include any ‘consultancy’, ‘advisory’ and

‘assistance’ activity that may be useful in the ‘management of a business’, such as

how to allocate financial and human resources efficiently, how to improve

productivity, how to increase market share, how to deal with competitors, how to

develop new products, how to communicate with the public, how to do marketing,

how to research consumer trends, how to launch new products, how to create a

corporate identity, etc.

The opponent’s services computer system design in Class 42 are related to

computer hardware. There is thus a link between the opponent’s and the contested

services, which are related to hardware, namely computer installation and repair. As

the services concerned are related to computers, they may have the same nature.

information technology for the same or related (authorised) undertakings to provide

scientific, technological or industrial analysis, research, and design and installation

and maintenance services. Therefore, the services under comparison are similar

(see, to that effect, 15/01/2013, T-451/11, Gigabyte, EU:T:2013:13, § 71).

Contested services in Class 38

The contested radio, telephone, telegraph communication services fall under the

broad category of telecommunication services. These services are strongly

interrelated with the creation and maintenance of specific computer programs without

Class 42. These services are commonly offered by the same undertakings from the

information technology and telecommunications field, and are available through the

same outlets. Therefore, these services are similar.

Contested services in Class 41

The contested tuition is included in the broad category of the opponent’s education.

Therefore, they are identical.

Contested services in Class 42

The contested consultancy in the field of computers includes, as a broader category

the opponent’s computer software consultancy. Since the Opposition Division cannot

dissect ex officio the broad category of the contested services, they are considered

identical to the opponent’s services.

b) 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 partly

directed at the public at large or at business customers, some of them having

knowledge of IT.

Both trade marks are figurative signs containing verbal and figurative elements. In

such cases, 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; decisions of 19/12/2011,

R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5,

Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier mark is a black and white sign consisting of the stylised word ‘excellia’, in

which the first letter ‘e’ is twice as big as the other letters. Furthermore, this letter ‘e’

is superimposed on an image of three people standing/walking.

The contested sign is the figurative mark ‘excelia’ in lower case letters in a standard

black typeface, except for the dot of the letter ‘i’, which is blue.

The unitary character of the European Union trade mark means that an earlier

European Union trade mark can be relied on in opposition proceedings against any

application for registration of a European Union trade mark that would adversely

affect the protection of the first mark, even if only in relation to the perception of

consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,

EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the

relevant public of the European Union is sufficient to reject the contested application.

whole are meaningless and quite fanciful, their degree of distinctiveness is not

affected and remains average.

The figurative element of the earlier mark, namely the three people standing/walking,

issue.

There is no element that can be considered dominant in either of the marks at issue.

Visually, the signs coincide in the sequences of letters ‘excel’ and ‘ia’. They differ in

the additional letter ‘l’, set, in the earlier mark, between these two identical

sequences of letters. They also differ in their stylisation and in the figurative element

black and white (the blue dot of the letter ‘i’ in the contested sign does not change the

global impression conveyed by the sign).

As word elements are of more significance than figurative elements, the Opposition

Division finds that the signs are visually similar to, at least, an average degree.

Aurally, the signs are identical, because, for the public under consideration, the

addition of the letter ‘l’ in the earlier mark will not change the pronunciation.

Conceptually, the signs will be perceived as referring to the same meaning,

‘excellent’. The relevant public will also perceive the meaning of the figurative

element. Nevertheless, considering that this figurative element has a fairly limited

capacity to indicate the commercial origin of the relevant goods and services, it does

not affect the fact that the signs are conceptually similar to an average degree.

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

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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence 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).

The contested goods and services are partly identical and partly similar to the

opponent’s services.

EU:T:2013:605, § 54). The consumers, in addition, may be prompted to choose the

goods and services in question having heard them being spoken about. Therefore,

a visual impression. To that extent, the fact that the trade marks are aurally identical

for the relevant public plays a major role.

Considering all the above, there is a likelihood of confusion on the part of the part of

the public for which ‘excelia’ and ‘excellia’ are meaningless and have the same

pronunciation, for instance on the part of the English- and French–speaking parts of

the public. As stated above in section c) of this decision, a likelihood of confusion for

only part of the relevant public of the European Union is sufficient to reject the

contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registration No 7 301 245. It follows that the contested trade mark

must be rejected for all the contested goods and services.

COSTS

According to Article 109(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 Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 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 for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been 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 Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be