OPPOSITION No B 2 701 772

Snipes SE, Schanzenstr. 41, 51063 Köln, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Snips SAS, 8 rue Edouard Lockroy, le sous-marin/sous-sol, 75011 Paris, France (holder).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 772 is upheld for all the contested services, namely

Class 35: Advertising; direct mail advertising (leaflets, prospectuses, printed matter, samples); presentation of goods on all communication media, for retail sale; web site traffic optimization; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on all communication media; publication of advertising texts; rental of advertising space; dissemination of advertisements; public relations.

2.        International registration No 1 272 191 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 272 191, namely against some of the services in Class 35. The opposition is based on, inter alia, international trade mark registration No 1 103 820 designating, inter alia, the European Union. 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.

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 international trade mark registration No 1 103 820 designating the European Union.

1. The services

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

Class 35: Retail services relating to clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery; online retail services and mail order retail services, included in this class, relating to clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery; the bringing together and displaying of clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery, enabling customers to conveniently view and purchase such goods; advertising.

The contested services are the following:

Class 35: Advertising; direct mail advertising (leaflets, prospectuses, printed matter, samples); presentation of goods on all communication media, for retail sale; web site traffic optimization; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on all communication media; publication of advertising texts; rental of advertising space; dissemination of advertisements; public relations.

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.

Advertising is identically contained in both lists of services.

Advertising 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 the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Examples of advertising services are rental of advertising time on communication media, telemarketing services, marketing, public relations and demonstration of goods, since they are all intended to promote other companies’ goods/services, albeit via different means.

The contested direct mail advertising (leaflets, prospectuses, printed matter, samples); online advertising on a computer network; rental of advertising time on all communication media; publication of advertising texts; rental of advertising space; dissemination of advertisements are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested presentation of goods on all communication media, for retail sale overlap with the opponent’s advertising, since both terms cover demonstration of goods via various media. Therefore, these services are considered identical.

The contested public relations are highly similar to the opponent’s advertising. They have the same purpose and nature, and they may have the same providers and distribution channels, such as marketing firms or service providers specialized in media relations. Further, they can be aimed at the same public.

The contested web site traffic optimization is at least similar to the opponent’s advertising. One way to boost the traffic of a web site is to optimise ‘ad placements’, a specific group of ad units, on which an advertiser can choose to place its ads using placement targeting. Ad placements can be as broad as an entire website or as specific as a single ad unit. Therefore, these services may target the same public, have the same purpose, such as intensifying the promotion of products and services of an undertaking via its website, and they can be provided by the same undertakings.

The contested organization of exhibitions for commercial or advertising purposes is similar to a low degree to the opponent’s advertising. These services have the same purpose, and share the same public.

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 business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, because undertakings may be particularly careful when choosing advertising providers, since the quality of these services potentially has serious impact on their business.

3. The signs

Snipes	snips
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Hungarian-speaking part of the public, such as the public in Spain and Hungary, where neither of the marks has a meaning.

Both marks consist of one word which is meaningless for the abovementioned part of the relevant public, therefore they are distinctive.

Visually, the signs coincide in the sequence of letters ‘SNIP’, and in their last letter ‘S’ The difference between the signs is confined to the additional fifth letter ‘E’ of the earlier mark (SNIP_S – SNIPES).

It must be noted that the relevant public generally tends to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that 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. It follows that the fact that in the present case, the first four letters of the marks are identical and are in the same order, increases the degree of their visual similarity.  

Therefore, the marks are visually similar to a higher than average degree.

Aurally, the earlier mark is pronounced in two syllables, SNI-PES, whereas the contested mark is pronounced in one syllable, SNIPS. However, the pronunciation of the coinciding letters is the same in both Spain and Hungary, respectively.

Therefore, the signs are aurally similar to at least an average degree.

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 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).

In the present case, the services at issue were found to be identical or similar to various degrees. The degree of attention may vary from average to high, and the earlier mark has a normal degree of distinctiveness.

The signs are visually similar to a higher than average degree, and are at least similar to an average degree from an aural point of view. The Opposition Division considers that the one letter difference between the signs, namely an additional letter ‘E’ in the earlier mark between the marks’ identical letter sequence ‘SNIP’ and their identical last letter ‘S’ are not capable of making sufficient difference to safely exclude the likelihood of confusion between the signs, even if the relevant public displays a heightened degree of attention, and even with regard to services similar to a low degree. In this regard, account must be taken of the fact that consumers tend to focus on the beginning of the signs, which is in the present case, identical until their fourth letter.

Moreover, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). This is particularly relevant in the present case considering that there is no conceptual difference between the signs that could facilitate their differentiation on behalf of the consumers.

In the light of the aforesaid, it can be concluded that a likelihood of confusion exists on the part of the Spanish- and Hungarian-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 international trade mark registration No 1 103 820 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right No 1 103 820 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder 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

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Martin EBERL

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.