OPPOSITION No B 2 786 237

Edurio, Kr. Barona 44-23, Riga, 1011, Latvia (opponent)

a g a i n s t

Marc Bellers, Poelslaan 10, 4102KN Culemborg, the Netherlands (applicant), represented by Michiel Steenhuis, Borneostraat 10, 5215 VC s-Hertogenbosch, the Netherlands (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 786 237 is partially upheld, namely for the following contested goods and services:

Class 9:         Non-downloadable audio books and electronic books; downloadable audio books and electronic books; downloadable electronic publications; downloadable audio and video recordings; sound recordings; downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; downloadable software via the internet and wireless devices; podcasts and streamed files; downloadable data files; computer software for mobile digital devices, namely software that allows users to access information on e-learning; computer software for mobile digital devices, namely e-learning programs, e-learning platforms.

Class 35:        Publishing of advertising printed matter; distribution of advertising material; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

Class 38:        Providing access to databases relating to e-learning; providing access to global computer networks for the transfer and dissemination of a wide range of information about and related to e-learning; providing access to global computer networks for online payment of electronic learning programs, enrollment and registration for educational online courses; providing an online forum with information on training where students and teachers can meet virtually; providing access via electronic (communications) networks into an interactive knowledge platform and documentation center where teaching and learning materials can be viewed, saved, edited and exchanged; The electronic (communications) networks providing access to an interactive knowledge platform and documentation center for the creation and / or aggregation of objects, namely, certifications, reports, academic or personal records, reflections, photos and videos; electronic data transfer; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

Class 41:        Education and training; education through electronic means, in the context of e-learning; education using programmed learning methods; compilation of teaching and educational materials in the field of e-learning; compiling training in the field of e-learning; information in the field of education; education and training; trainings and courses; organization of conferences, seminars, workshops, lectures and conferences for educational purposes related to e-learning; publishing, editing and distribution of books, magazines, newspapers, magazines, press releases, leaflets, brochures and other printed matter and periodicals, and electronic publications; making available, compiling and publishing of (digital) teaching and teaching materials and examinations in the context of e-learning; granting and awarding of diplomas and certificates; all the aforesaid services in particular with regard to e-learning; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

2.        European Union trade mark application No 15 548 357 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 548 357, ‘EDURION’. The opposition is based on European Union trade mark registration No 13 461 918, ‘Edurio’. 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 the following:

Class 9:         Databases (electronic); Software; Recorded data files; Audio visual recordings; Audio recordings; Downloadable publications; Electronic publications recorded on computer media; Electronic publications, downloadable.

Class 41:         Education and instruction; Publication of educational texts; Publication of educational books; Publication of educational teaching materials; Publication of printed matter relating to education.

Class 42:         Software development, programming and implementation; IT consultancy, advisory and information services.

The contested goods and services are the following:

Class 9:         Non-downloadable audio books and electronic books; downloadable audio books and electronic books; downloadable electronic publications; digital audio and audio-visual tapes and disks; DVDs, downloadable audio and video recordings; CDs; sound recordings; downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; downloadable software via the internet and wireless devices; podcasts and streamed files; downloadable data files; computer software for mobile digital devices, namely software that allows users to access information on e-learning; computer software for mobile digital devices, namely e-learning programs, e-learning platforms.

Class 35:         Advertising; management of commercial affairs; business administration; administrative services; publishing of advertising printed matter; distribution of advertising material; promotional activities; publicity; business organization, business economics and business administration consultancy; management of databases; marketing; marketing, market research and market analysis; Subscription services for books, audio books, magazines and periodicals and electronic books, electronic magazines and electronic journals; commercial- business mediation in the purchase and sale of non-downloadable audio books and electronic books, downloadable audio books and electronic books, downloadable electronic publications, digital audio and audio-visual tapes and disks, DVDs, downloadable audio and video recordings, CDs, sound recordings, downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; commercial- business mediation in the purchase and sale of downloadable software via internet and wireless devices, podcasts and streamed files, downloadable databases, computer software for mobile digital devices, namely software that allows users to access information on e-learning, computer software for mobile digital devices, namely e-learning programs and e-learning platforms; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

Class 38:         Providing access to databases relating to e-learning; providing access to global computer networks for the transfer and dissemination of a wide range of information about and related to e-learning; providing access to global computer networks for online payment of electronic learning programs, enrollment and registration for educational online courses; providing an online forum with information on training where students and teachers can meet virtually; providing access via electronic (communications) networks into an interactive knowledge platform and documentation center where teaching and learning materials can be viewed, saved, edited and exchanged; The electronic (communications) networks providing access to an interactive knowledge platform and documentation center for the creation and / or aggregation of objects, namely, certifications, reports, academic or personal records, reflections, photos and videos; electronic data transfer; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

Class 41:         Education and training; education through electronic means, in the context of e-learning; education using programmed learning methods; compilation of teaching and educational materials in the field of e-learning; compiling training in the field of e-learning; information in the field of education; education and training; trainings and courses; organization of conferences, seminars, workshops, lectures and conferences for educational purposes related to e-learning; film rental; publishing, editing, lending and distribution of books, magazines, newspapers, magazines, press releases, leaflets, brochures and other printed matter and periodicals, and electronic publications; making available, compiling and publishing of (digital) teaching and teaching materials and examinations in the context of e-learning; granting and awarding of diplomas and certificates; all the aforesaid services in particular with regard to e-learning; Consultancy and information regarding the aforesaid services, whether or not via a helpdesk; The aforesaid services also via electronic networks, including the Internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services in Classes 35, 38 and 41, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

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Contested goods in Class 9

The contested non-downloadable audio books and electronic books overlap with the opponent’s electronic publications recorded on computer media. Therefore, they are identical.

The contested downloadable audio books and electronic books are included in the broad category of the opponent’s downloadable publications. Therefore, they are identical.

The contested downloadable electronic publications are identically contained in the opponent’s list in a different word sequence, namely electronic publications, downloadable. Therefore, they are identical.

The contested sound recordings; podcasts are included in the broad category of the opponent’s audio recordings. Therefore, they are identical.

The contested downloadable audio and video recordings are included in the broad category of the opponent’s audio visual recordings.  Therefore, they are identical.

The contested downloadable data files overlap with the opponent’s downloadable publications. Therefore, they are identical.

The contested downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; downloadable software via the internet and wireless devices; computer software for mobile digital devices, namely software that allows users to access information on e-learning; computer software for mobile digital devices, namely e-learning programs, e-learning platforms are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested streamed files refer to audio and/or visual content streamed live. They can be produced by the same companies as the opponent’s audio visual recordings. Furthermore, they have the same purpose, target the same public and are in competition with each other. Therefore, they are similar.

The contested digital audio and audio-visual tapes and disks; CDs; DVDs are all blank data carriers. They do not have relevant connections with the opponent’s goods and services in Classes 9, 41 and 42. The mere fact that (at least) some of the opponent’s goods in Class 9 can be stored or saved onto data carriers is not sufficient to lead to a finding of similarity, as the latter are simply ancillary goods in this situation. The contested goods are produced by different undertakings than the ones manufacturing/providing the opponent’s goods and services. Furthermore, their natures, methods of use and purposes are different and they are not in competition. Therefore, they are dissimilar.

Contested services in Class 35

The contested publishing of advertising printed matter; distribution of advertising material; the aforesaid services also via electronic networks, including the Internet are services provided by publication houses, as are the opponent’s publication of printed matter relating to education in Class 41. These services have the same natures and distribution channels. Therefore, they are similar. 

Insofar as consultancy and information regarding the aforesaid services, whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet is connected to the services listed above that were found similar to the opponent’s services, they are also at least similar to a low degree to the opponent’s same services. This is because these services are closely linked with the contested services found to be similar and have the same commercial origin and distribution channels.

The contested advertising; promotional activities; publicity; marketing (listed twice); the aforesaid services also via electronic networks, including the Internet are all services related to advertising and promotion. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements or that some goods may be used as a medium for disseminating advertising is insufficient for a finding of similarity. Therefore, these contested services and the opponent’s goods and services are considered dissimilar.

The contested management of commercial affairs; business administration; administrative services; business organization, business economics and business administration consultancy; market research and market analysis; the aforesaid services also via electronic networks, including the Internet are all services related to running a business. They have nothing in common with any of the opponent’s goods and services. They are provided by different companies, have different distribution channels and target different customers. Furthermore, they are not in competition nor complementary. Therefore, they are dissimilar.

The contested management of databases; the aforesaid services also via electronic networks, including the Internet do not share relevant connections with the opponent’s goods and services either. They have a different nature, serve a different purpose and do not usually have the same commercial origin. Furthermore, they are not in competition. They are, therefore, dissimilar.

The contested subscription services for books, audio books, magazines and periodicals and electronic books, electronic magazines and electronic journals; the aforesaid services also via electronic networks, including the Internet refer to services whereby the customer has an opportunity to pay a fixed fee to receive or access the material produced by third parties. The purpose of this service is not to manufacture goods or to provide publication or computer services to third parties. Therefore, these services are dissimilar to all of the opponent’s goods and services.

The contested commercial- business mediation in the purchase and sale of non-downloadable audio books and electronic books, downloadable audio books and electronic books, downloadable electronic publications, digital audio and audio-visual tapes and disks, DVDs, downloadable audio and video recordings, CDs, sound recordings, downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; commercial- business mediation in the purchase and sale of downloadable software via internet and wireless devices, podcasts and streamed files, downloadable databases, computer software for mobile digital devices, namely software that allows users to access information on e-learning, computer software for mobile digital devices, namely e-learning programs and e-learning platforms; the aforesaid services also via electronic networks, including the Internet refer to serving as an intermediary in the sale and purchase of the said goods. These services have no relevant links with any of the opponent’s goods and services. They are provided by the different companies and they differ in their natures, purposes and methods of use. Furthermore, they are not in competition. Therefore, they are dissimilar.

The remaining contested consultancy and information regarding the aforesaid services [namely, advertising; management of commercial affairs; business administration; administrative services; promotional activities; publicity; business organization, business economics and business administration consultancy; management of databases; marketing; marketing, market research and market analysis; Subscription services for books, audio books, magazines and periodicals and electronic books, electronic magazines and electronic journals; commercial- business mediation in the purchase and sale of non-downloadable audio books and electronic books, downloadable audio books and electronic books, downloadable electronic publications, digital audio and audio-visual tapes and disks, DVDs, downloadable audio and video recordings, CDs, sound recordings, downloadable software in the form of mobile applications (apps) for use on mobile phones, smartphones, notebook computers, computers and media players; commercial- business mediation in the purchase and sale of downloadable software via internet and wireless devices, podcasts and streamed files, downloadable databases, computer software for mobile digital devices, namely software that allows users to access information on e-learning, computer software for mobile digital devices, namely e-learning programs and e-learning platforms; The aforesaid services also via electronic networks, including the Internet], whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet have a different nature than the opponent’s goods in Class 9 and are rendered in distinct areas than the opponent’s services in Classes 41 and 42. Furthermore, they are not complementary or in competition and do not usually originate from the same undertakings. Therefore, they are dissimilar to the opponent’s goods and services.

Contested services in Class 38

The contested providing access to databases relating to e-learning; providing access to global computer networks for the transfer and dissemination of a wide range of information about and related to e-learning; providing access to global computer networks for online payment of electronic learning programs, enrollment and registration for educational online courses; providing an online forum with information on training where students and teachers can meet virtually; providing access via electronic (communications) networks into an interactive knowledge platform and documentation center where teaching and learning materials can be viewed, saved, edited and exchanged; The electronic (communications) networks providing access to an interactive knowledge platform and documentation center for the creation and / or aggregation of objects, namely, certifications, reports, academic or personal records, reflections, photos and videos; electronic data transfer; The aforesaid services also via electronic networks, including the Internet are all telecommunication services allowing people to communicate with one another by remote means. On the other hand, the opponent’s software in Class 9 is broadly defined and can also encompass telecommunications control software (i.e. software that provides the ability to perform telecommunication activities operations). Although their nature is different, the purpose and distribution channels of these contested services and of the opponent’s software are the same. Furthermore, they are complementary and are directed at the same consumers. Therefore, they are similar.

The remaining consultancy and information regarding the aforesaid services (namely all the contested services listed above), whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet are similar to the opponent’s IT consultancy, advisory and information services, because consultancy in relation to telecommunication and IT have the same purposes, distribution channels and can be provided by the same undertakings.

Contested services in Class 41

The contested education (listed twice) is specified in the applicant’s list of services as ‘education; all the aforesaid services in particular with regard to e-learning; the aforesaid services also via electronic networks, including the Internet’ which does not restrict the scope of protection of these services as the terms in particular, also and including indicate that the specific services are only examples. Therefore, these services are identical to the opponent’s education, as they are contained in both lists.

The contested training (listed twice); education through electronic means, in the context of e-learning; education using programmed learning methods; information in the field of education; trainings and courses; all the aforesaid services in particular with regard to e-learning; consultancy and information regarding the aforesaid services, whether or not via a helpdesk; consultancy and information regarding education, whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet are included in the broad category of the opponent’s education and instruction. Therefore, they are identical.

The contested publishing of books, magazines, newspapers, magazines, press releases, leaflets, brochures and other printed matter and periodicals, and electronic publications; making available and publishing of (digital) teaching and teaching materials and examinations in the context of e-learning; all the aforesaid services in particular with regard to e-learning; consultancy and information regarding the aforesaid services, whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet overlap with or are included in the opponent’s publication of educational teaching materials. Therefore, they are identical.

The contested editing and distribution of books, magazines, newspapers, magazines, press releases, leaflets, brochures and other printed matter and periodicals, and electronic publications; all the aforesaid services in particular with regard to e-learning; the aforesaid services also via electronic networks, including the Internet can be provided by the same companies as the opponent’s publication of educational texts; publication of educational books; publication of educational teaching materials. They can target the same public and are complementary. Therefore, they are similar.

The contested compilation of teaching and educational materials in the field of e-learning; compiling training in the field of e-learning; organization of conferences, seminars, workshops, lectures and conferences for educational purposes related to e-learning; making available, compiling of (digital) teaching and teaching materials and examinations in the context of e-learning; granting and awarding of diplomas and certificates; all the aforesaid services in particular with regard to e-learning; the aforesaid services also via electronic networks, including the Internet are services in relation to education. They can be provided by the same companies and target the same public as the opponent’s education and instruction. Furthermore, they are complementary. Therefore, they are similar.

Insofar as the contested consultancy and information regarding the aforesaid services, whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet is connected to the services listed above that were found similar to the opponent’s services, they are also at least similar to a low degree to the opponent’s same services. This is because these services are closely linked with the contested services found to be similar. They have the same commercial origin, distribution channels and are directed at the same consumers.

The contested film rental; lending of books, magazines, newspapers, magazines, press releases, leaflets, brochures and other printed matter and periodicals, and electronic publications; all the aforesaid services in particular with regard to e-learning; all the aforesaid services in particular with regard to e-learning; consultancy and information regarding the aforesaid services, whether or not via a helpdesk; the aforesaid services also via electronic networks, including the Internet are services generally provided by libraries and film rental shops (including electronic ones). While the rented or borrowed goods could include educational material as the opponent’s goods and services, it is not sufficient to make a link between these services and the opponent’s goods and services. They have different natures, are provided/produced by different companies and have different distribution channels. Therefore, they are dissimilar.

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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Edurio	EDURION
Earlier trade mark	Contested sign

The relevant territory is European Union.

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).

As both signs are word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters.

The words ‘Edurio’ forming the earlier mark and respectively ‘EDURION’ forming the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘edurio-‘, which form the earlier mark and are reproduced in the contested sign. The marks differ in the additional final letter ‘-n’ of the contested mark. The signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘e/d/u/r/i/o’, present identically in both signs and differs only in the last letter ‘n’ of the contested sign which has no counterpart in the earlier mark. Given that the earlier sign is entirely reproduced in the contested sign, the signs are aurally overall highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 goods and 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).

The goods and services are partially identical, partially similar (to various degrees) and partially dissimilar.  The signs are visually and aurally similar to a high degree on account of the earlier mark being entirely reproduced in the contested sign.

Taking into consideration all the foregoing and the fact that the average consumer retains only an imperfect image of the mark, the Opposition Division considers that the last differing letter ‘-n’ of the contested sign is not enough to counteract the visual and aural similarities arising from the six letters the signs have in common.

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar. The opposition is also successful insofar as the services that are similar to a low degree are concerned because the high degree of visual and aural similarity between the signs will outweigh the low degree of similarity between the services.

The rest of the contested goods and services are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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.

The Opposition Division

Janja FELC

Birgit Holst FILTENBORG

Oana-Alina STURZA

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.