OPPOSITION No B 2 759 093

Kompass International Sa, 66, Quai du Maréchal Joffre, 92400 Courbevoie, France (opponent), represented by Feral-Schuhl / Sainte-Marie Aarpi, 24, rue Erlanger, 75016 Paris, France  (professional representative)

a g a i n s t

Gunhard Keil, Schloss 1, 7512 Kohfidisch, Austria (applicant).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 093 is upheld for all the contested services.

2.        European Union trade mark application No 15 456 411 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 456 411 ‘Kommunikations-Kompass’. The opposition is based on European Union trade mark registration No 13 877 196 ‘KOMPASS’. 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 services

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

Class 35:         Advertisement services; Direct mail advertising, publication of publicity texts; Production of advertising films; Advertising provided via a database; Telemarketing services; Online advertising and marketing services; Consultancy, advice and assistance for advertising, marketing and business promotion; Business marketing consultancy services; Advertising, marketing and promotion, namely development of advertising campaigns; Search engine marketing services; Optimisation of search engines; Consultancy relating to optimisation of search engines; Consultancy relating to business marketing, namely media planning and placement services for others in connection with online advertising, and analysing search engine and keyword placements for others for the purpose of search engine optimisation; Rental of advertising space and advertising matter; Banner advertising; Planning for advertising purposes; Pay per click advertising; Online advertising network matching services for connecting advertisers to websites; Advertising and business management consultancy; Advertising provided via the internet; On-line advertising on a computer network; Promotion of goods and services for others, by means of advertising on websites; provision of advertising space on electronic media; Rental of advertising time on communications media of all kinds; Business information; Providing of marketing information and commercial information; Collection of information for and about companies; Commercial information relating to businesses; Commercial information for businesses; Providing of information relating to business and commercial contacts; Administrative assistance in establishing a network of business contacts; Providing of information and expert opinions on companies and business; Providing of information relating to companies and business via computer networks; Compilation of directories for publication on the internet; Providing of information relating to online business directories; Analysis of business data; Collection, systemisation and compilation of information into a central file and databases, solely relating to financial or company information; Computerised file management; Updating and maintenance of data in computer databases, solely relating to financial or company information; Collection and compilation of statistical data; Analysis of data on business statistics; Market studies relating to internet user behaviour and customer loyalty; Searching for information in computer files for others, solely relating to financial or company information; Services relating to franchising, namely assistance in the marketing of databases on paper or electronic media; Assistance in the marketing of databases on paper or electronic media; Wholesaling and retailing, including online, of databases on printed or electronic media; Business and management assistance; Business management; Business administration; Business administration of licences for goods and services of others; Office functions; Computerised verification of company data processing; Business and company networking; The bringing together of business and professional contacts; Consultancy and information relating to the aforesaid services; Collection, compilation, systemisation and updating of financial data relating to companies.

Class 41:         Education; Providing of training; On-line training services; Entertainment; Arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and training workshops; Micropublishing; Providing on-line electronic publications, not downloadable; Layout services (other than for advertising purposes); Video tape editing; Publication of texts, other than publicity texts; Publication of books; Publication of electronic books and journals on-line; Editing of texts (except publicity texts); Information and advisory relating to aforesaid services.

The contested services are the following:

Class 35:         Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional services.

Class 41:         Education, entertainment and sports.

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.

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

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

Contested services in Class 35

Business analysis services; Business assistance, management and administrative services are identically contained in both lists of services (including synonyms).

The contested Advertising, marketing and promotional services include as a broader category, the opponents Advertising, marketing and promotion, namely development of advertising campaigns. Since the Opposition Division cannot dissect ex officio the broad category of the contested services they are considered identical to the opponent’s services.

The contested research services overlap with the opponent’s Collection, systemisation and compilation of information into a central file and databases, solely relating to financial or company information. The services are identical.

The contested information services includes, as a broader category the opponent’s Business information. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Commercial trading and consumer information services overlap with the opponent’s Providing of information relating to business and commercial contacts and are identical therefore.

Contested services in Class 41

Education and entertainment are identically contained in both lists of services.

Sports are similar to opponent’s entertainment services as they have the same purpose. They can coincide in end user 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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.  

3. The signs

KOMPASS	Kommunikations-Kompass
Earlier trade mark	Contested sign

The relevant territory is the 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).

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.

The elements of the mark are meaningful in certain territories, for example, in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

First, it must be recalled that the lower-case and upper-case letters used in the contested sign and earlier mark, respectively, do not have any impact on the assessment of the signs’ similarity since the signs are word marks and, thus, their protection relates to the respective word elements and not to the specific figurative or stylistic elements which the marks might have (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).

The element KOMPASS of the marks will be understood as ‘an instrument that you use for finding directions (www.collinsdictionary.com, 22/08/2017) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The element ‘Kommunikations’ of the contested compact sign is a qualifier for the following noun, and means ‘of the act or an instance of communicating’ (www.collinsdictionary.com 22/08/2017). Bearing in mind that the relevant services are various types of business, information and advertising services, as well as education, sports, entertainment, that are related to communications, this element is considered to have a lesser degree of distinctiveness in respect of all these services. The hyphen would be perceived as such.

Visually and aurally, the signs coincide in the element KOMPASS, which is the only element of the earlier mark and the second and more distinctive element in the contested mark. The marks differ in the element ‘Kommunikations-‘ of the contested mark, which is of lesser degree of distinctiveness.  

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in respect of the coinciding distinctive element KOMPASS, the signs are conceptually similar to an above 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.

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 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. 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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are partly identical and partly similar. The level of attention is average. The similarities and dissimilarities between the marks have been established.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Therefore, since the differences referred to above are overlooked, as they are confined to a word of lesser degree of distinctiveness acting as a qualifier of the following noun (in the contested mark), it is likely that the two signs, in view of the coinciding elements, are perceived as coming from the same undertaking or economically-linked undertakings.

Furthermore, it constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface or colour, or adding terms or elements to them) in order to name new lines of products, or to create a modernised version of it.  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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, the public might consider the KOMPASS service line being amended with a new service line with a similar looking/sounding beginning.

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the relevant public to believe that the conflicting services, which are identical and similar, come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part 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 13 877 196. It follows that the contested trade mark must be rejected for all the contested 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

Birgit FILTENBORG

Erkki MÜNTER

Irina SOTIROVA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.