OPPOSITION DIVISION
OPPOSITION No B 1 903 304
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
Dcha, 28010 Madrid, Spain (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 903 304 is partially upheld, namely for the following
contested goods:
Class 16: Publications, catalogues, pamphlets, printed matter, teaching
materials, books, newspapers, magazines.
2. European Union trade mark application No 9 944 166 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 9 944 166 ‘Informa Comercial’. The opposition is
based on European Union trade mark registration No 8 617 045 ,
international trade mark registration No 728 627 ‘INFORMA’ designating the Czech
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.
Decision on Opposition No B 1 903 304 page: 2 of 9
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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 8 617 045, international trade
mark registration No 728 627 designating Sweden, and Benelux trade mark
registrations No 650 489 and No 651 542.
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
blocks, holders for checkbooks [cheque books]; money clips; passport
holders; rosaries.
Class 35: Advertising, business management, business administration, office
functions, management of data files, the providing of data from address files.
Class 41: Education, providing of training, entertainment, sporting and cultural
activities, arranging study days, courses and congresses, publication of periodicals,
newsletters and books, publication of written courses.
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 35: Computerized file management; providing data from address files.
Class 41: Organization of seminars, courses and congresses; publication and
issuing of periodicals, newsletters and books; publication and issuing of
correspondence courses.
Benelux trade mark registrations No 650 489 and No 651 542
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.
Decision on Opposition No B 1 903 304 page: 3 of 9
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
materials, books, newspapers, magazines.
Class 36: Financial affaires, monetary affairs, provision of information relating to
finance, financial services, financial consultancy.
Class 38: Telecommunications, transmission of messages by computer,
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
non-exhaustive list of examples (on the use of ‘in particular’, which has the same
function as ‘including’, see a reference in judgment of 09/04/2003, T-224/01,
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.
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
are included in the broader category of the opponent’s printed matter, including
printed matter containing data from files, covered by the earlier international
registration. The goods are considered identical.
Contested services in Class 36
The contested financial affairs, monetary affairs, provision of information relating to
finance, financial services, financial consultancy are all financial services, which are
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
paper materials, stationery and printed matter) and services (including services such
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,
Decision on Opposition No B 1 903 304 page: 4 of 9
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
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; booking of seats for
shows; calligraphy services in Class 41) and the contested 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.
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
to another, as well as transmitting messages from one person to another, putting a
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,
purpose and method of use. Furthermore, they are neither complementary to nor in
competition with the opponent’s goods and services and, although they may have the
same target public, this argument alone is not sufficient for a finding of any degree of
similarity between them.
As noted above, the earlier EUTM is registered for the entire class headings of
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;
booking of seats for shows; calligraphy services in Class 41) and the contested
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.
Contested services in Class 42
The contested consultancy in the field of computers, computer programming
encompass activities related to the creation of computer software and consulting in
the computing field. They are usually provided by specialists or enterprises
specialising in computer technology, which are not the producers or providers of the
opponent’s goods and services. The contested services and the opponent’s goods
and services do not have the same nature, purpose or method of use and are neither
complementary nor in competition. It follows that they are dissimilar.
As mentioned above, the earlier EUTM is registered for the entire class headings of
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;
booking of seats for shows; calligraphy services in Class 41) and the contested
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.
Decision on Opposition No B 1 903 304 page: 5 of 9
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.
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 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
INFORMA Informa Comercial
Earlier trade mark Contested sign
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).
Both signs are word marks. In the case of word marks, it is the word as such that is
protected, and not its written form. Therefore, the use of upper or lower case letters is
immaterial.
The earlier mark consists of the sole element ‘INFORMA’. This element does not
exist as a word in Swedish. The relevant public, however, is likely 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.
The contested sign consists of the element ‘Informa’ followed by the element
‘Comercial’. The element ‘Informa’ will be perceived as it will be in the earlier mark
and reference is made to the conclusion reached above regarding its distinctiveness,
which is equally applicable to the relevant goods ‘teaching materials and variety of
printed matter’ of the contested sign.
As far as the element ‘Comercial’ is concerned, it will be perceived and understood
by the relevant public as a reference to the Swedish word ‘kommersiell’ or even as
the English equivalent word ‘commercial’, as in ‘of, connected with, or engaged in
commerce’. Bearing in mind that the relevant goods are ´teaching materials and
variety of printed matter´, the element ‘Comercial’ is considered weak for these
goods as it refers to the subject matter of the relevant goods.
Decision on Opposition No B 1 903 304 page: 6 of 9
The elements ‘Informa’ and ‘Comercial’ of the contested sign, taken in their
combination are likely to be perceived as a reference to ‘commercial information’,
and thus the element ‘Comercial’ serves as to complement or qualify the element
‘Informa’, the latter being the most distinctive element in the sign.
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).
They differ in the element ‘Comercial’ (and its sound) of the contested sign, which
has no counterpart in the earlier mark. Reference is made to the conclusion reached
above regarding the distinctiveness of the elements of the signs.
As the signs coincide in the only element of the earlier mark, present as an
independent first element in the contested sign, and taking into account the
distinctiveness of the elements of the signs, the signs are considered visually and
aurally similar to an average 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’.
Therefore, 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 claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
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
As concluded above, the contested goods are identical to the opponent’s goods, and
the contested services are dissimilar to the goods and services of the earlier mark.
The degree of attention will be average when choosing the relevant goods.
Although the earlier sign has a lower than average degree of distinctiveness for the
relevant goods, this cannot prevent the opposition against the contested goods found
Decision on Opposition No B 1 903 304 page: 7 of 9
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,
EU:T:2005:102).
Furthermore, it was also established above that the signs are visually, aurally and
conceptually similar to an average degree. Bearing in mind that the earlier mark is
included in its entirety as the first element of the contested sign, where it will be
perceived as a separate identifiable element, and due to the nature of the additional
element ‘Comercial’ of the contested sign, it is highly conceivable that the relevant
consumer will perceive the contested mark as a sub-brand, a variation of the earlier
mark, configured in a different way according to the type of goods that it designates
(23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
In its observations, the applicant argues that it owns several European Union and
Spanish trade mark registrations, containing the word ‘INFORMA’, and for which it
claims that they coexist with the opponent’s earlier marks and that the applicant’s
rights ‘are prior from those of the opponent’.
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
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the applicant for the
European Union trade mark duly demonstrated that such coexistence was based
upon the absence of any likelihood of confusion on the part of the relevant public
between the earlier marks upon which it relies and the intervener’s earlier mark on
which the opposition is based, and provided that the earlier marks concerned and the
marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169,
§ 86).
In this regard it should be noted that formal coexistence in national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
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.
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Decision on Opposition No B 1 903 304 page: 8 of 9
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
in support of its claim in regard to any territory (or market).
Therefore, this argument of the applicant must be rejected as unfounded.
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 partly well founded
on the basis of the opponent’s international trade mark registration No 728 627
designating Sweden.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The contested services are dissimilar. As similarity of goods and services is a
necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this article and directed at these services cannot be successful.
As noted above (in the section headed ‘The goods and services’) the contested
services are also dissimilar to the goods and services of earlier European Union
trade mark registration No 8 617 045 and Benelux trade mark registrations
No 650 489 and No 651 542. Therefore, the outcome cannot be different with respect
to services for which the opposition has already been rejected; no likelihood of
confusion exists with respect to those services and these other earlier rights
(European Union trade mark registration No 8 617 045 and Benelux trade mark
registrations No 650 489 and No 651 542).
For the sake of completeness, it should be noted that the opponent has also based
its opposition on international trade mark registration No 728 627 ‘INFORMA’
(already compared above) designating the Czech Republic, Denmark, Germany,
France, Italy, Austria, Romania, Slovakia and Finland.
Since these designations cover the same or a narrower scope of goods and services,
the outcome cannot be different with respect to services for which the opposition has
already been rejected. Therefore, no likelihood of confusion exists with respect to
those services and these other designations of international trade mark registration
No 728 627.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
Decision on Opposition No B 1 903 304 page: 9 of 9
The Opposition Division
Natascha GALPERIN Irina SOTIROVA André Gerd Günther
BOSSE
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.