OPPOSITION No B 2 695 933

Executive Sport Limited, 59 Victoria Road, Surbiton Surrey KT6 4NQ, United Kingdom (opponent), represented by Couchmans LLP, 20-22 Bedford Row, London  WC1R 4EB, United Kingdom (professional representative)

a g a i n s t

Active Change Foundation, 453 Lea Bridge Road, Leyton, London  E10 7EA, United Kingdom (applicant), represented by Dechert LLP, 160 Queen Victoria Street, London  EC4V 4QQ, United Kingdom (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 695 933 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 903 603. The opposition is based on European Union trade mark registration No 13 091 905. 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 16: Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Decoration and art materials and media; Disposable paper products; Paper and cardboard; Printed matter; Stationery and educational supplies; Advertisement boards of paper or cardboard. 

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotion services; Advertising and marketing consultancy; Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Promotion, advertising and marketing of on-line websites; Advertising, promotional and marketing services; Advertising and marketing services; Negotiation of commercial transactions for third parties; Negotiation and settlement of commercial transactions for third parties; Negotiation and conclusion of commercial transactions for third parties.

Class 41: Education, entertainment and sports; Publishing and reporting; Translation and interpretation; Conference services; Arranging conferences; Arranging of conferences; Arranging and conducting conferences; Conferences, exhibitions and seminars; Organising of educational conferences; Organization of educational conferences; Organising of education conferences; Conducting of educational conferences; Conducting of business conferences; Conferences, exhibitions and competitions; Arranging and conducting educational conferences; Conferences (Arranging and conducting of -); Organisation of meetings and conferences; Organisation of seminars and conferences; Arranging and conducting of conferences; Arranging of an annual educational conference; Arranging of seminars; Arranging of workshops; Symposiums relating to entertainment; Arranging for ticket reservations for shows and other entertainment events; Arranging of demonstrations for entertainment purposes; Organising of educational exhibitions; Organising of education exhibitions; Entertainment services relating to competitions; Entertainment services relating to sport; Entertainment, sporting and cultural activities; Arrangement of conferences for educational purposes; Arrangement of conferences for recreational purposes; Arrangement of conventions for educational purposes; Arrangement of conventions for recreational purposes; Arrangement of seminars for educational purposes; Arrangement of seminars for recreational purposes; Arranging and conducting award ceremonies; Arranging and conducting competitions; Arranging and conducting conferences and seminars; Arranging and conducting of commercial, trade and business conferences; Arranging and conducting of congresses; Arranging and conducting of symposiums; Arranging and conducting of seminars; Arranging of award ceremonies; Arranging of award ceremonies to recognise achievement; Arranging of competitions for entertainment purposes; Arranging of competitions for training purposes; Arranging of exhibitions for educational purposes; Arranging of seminars relating to entertainment.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions in connection with education, counselling and training development programming; the provision of personnel to provide relief and assistance to people in need and the provision of personnel to research, design, promote, fund and/or implement education, counselling and training development programmes which seek to address the underlying causes of alienation/ radicalisation and which seek to protect, assist and empower children and young people who experience deprivation, exclusion and vulnerability in socially and economically disadvantaged communities; advocacy and public awareness campaigns, advertising and promotional services, fundraising campaigns, information and consultancy services all in education, counselling and training development context. 

Class 36: Insurance, connection with education, counselling and training development programming; financial services including charitable fundraising including by way of events, raffles, lotteries, subscriptions, sponsorship, collections and otherwise; financial arrangements to facilitate charitable giving including recovery of tax for charitable purposes; financial services to facilitate cash transfers to beneficiaries of education, counselling and training development programmes; provision of funding to partner organisations to enable such organisations to implement education, counselling and training development programmes; financial sponsorship; financial subsidies and assistance; management and monitoring of funds; financial development assistance; financial assistance for populations, in particular in case of war, epidemic or natural disaster; information and consultancy services relating to the aforesaid services, including via an electronic, website all in the education, counselling and training development context.

Class 41: Providing education and training services aimed at working with young people at risk from gang culture and/or radicalisation raising public awareness on those; provision of education services; education and training services to contribute to learning and development within education, counselling and training and development sector; promotion and organisation of conferences as well as of seminars, workshops, colloquiums, lectures and other similar educational meetings; leisure activities and entertainment; cultural and sporting activities; organisation of exhibitions; organising competitions and events to promote and publicise the work of education, counselling and training development organisations and to raise awareness of underlying issues that lead to poverty and injustice; film production; publication on all media of texts, books, magazines and information documents; book lending; production, organisation and presentation of live performances; providing of training for personnel working with young people at risk from gang culture and/or radicalisation development context; news reports and photographic reports; information and consultancy services relating to the aforesaid services, including via an electronic website, all in the education, counselling and training development context.

Class 42: Working with young people at risk from gang culture and/or radicalisation to the humanitarian relief and development sector; industrial analysis and research services; design and development of computer hardware and software relating to the aforesaid; operating a website; information and consultancy services relating to the aforesaid services, including via an electronic website, all in the education, counselling and training development context. 

Class 45: Personal and social services rendered by others to meet the needs of individuals in the context of education, counselling and training development programmes; security services for the protection of individuals, including staff; child protection programming; shelter, humanitarian assistance; consultancy with regard to establishing an emergency camp to young people at risk; development and introduction of humanitarian assistance programmes; information and consultancy services relating to the aforesaid services, including via an electronic website, all in relation to young people at risk in relief and development context; lobbying and advocating services on issues of importance in an education, counselling and training development context.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 assumed to be identical are partly directed at the public at large including professionals (e.g. management and monitoring of funds in Class 36 and book lending in Class 41) and partly at business customers with specific professional knowledge or expertise only (e.g. business management in Class 35). Their degree of attention may vary from average to high depending on the price, (specialised) nature, or terms and conditions of the purchased or contracted services. For example, where the consumer is likely to pay an average degree attention when borrowing a book, he/she may be highly attentive when acquiring the management and monitoring of funds of Class 36.  

3. The signs

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 contested sign consists of a figurative element and the words ‘Young Leaders Programme’. Although the applicant correctly points out that the figurative element is more colourful than the verbal element, it cannot be considered more visually eye-catching, since it has more or less the same size as the verbal element. Therefore, this mark has no dominant element.

The distinctiveness of this mark’s components depends on the understanding of the English terms ‘Young Leaders Programme’, since the English speaking part of the public will perceive this expression as a whole making reference to the targeted consumers of the services in question, while part of the non-English speaking relevant consumers may merely grasp the meaning of the word ‘PROGRAMME’ due to its identity or similarity to equivalent words in other languages of the EU.

In the latter scenario the words ‘YOUNG’ and ‘LEADERS’ are distinctive and the word ‘PROGRAMME’ weak, since the latter will be perceived as indicating that the services are being offered in the form of a programme, e.g. according to a plan or schedule. In this scenario a likelihood of confusion is more likely to exist than in the scenario that the words ‘YOUNG’ and ‘LEADERS’ are understood and, thus, equally weak. Therefore, the Opposition Division will focus its assessment on the part of the non-English speaking EU-consumers that do not understand the words ‘YOUNG’ and ‘LEADERS’, which represents the best light in which the opponent’s case can be considered.

The earlier mark consists of a dark blue rectangular background containing 1) a figurative star shape followed by 2) a vertical white line which separates the star from 3) the distinctive word ‘LEADERS’ with in its top right corner 4) the symbol ‘TM’. This ‘TM’ symbol is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this is a negligible element which will not be taken into consideration for the purposes of comparison. In terms of dominance, the star device and the word LEADERS are equally eye-catching; both occupying a similar amount of space within the mark.

Visually, a certain similarity between the signs cannot be denied due to the fact that they both contain the distinctive word ‘LEADERS’. However, the signs’ differentiating figurative and verbal elements give the marks a different structure and composition, which have the effect that the similarity conveyed by the common element ‘LEADERS’ is considerably reduced. Indeed, it is of considerable importance that the single verbal element of the earlier mark is merely one out of three verbal elements of the contested sign and is placed in a less noticeable location between two different words ‘YOUNG’ and ‘PROGRAMME’. Therefore, also considering that the word ‘YOUNG’ has an independent distinctive and occupies a more prominent place at the beginning of the sign, the relevant consumers on which the analyses is focussed will not easily single out the common word ‘LEADERS’. Moreover, the signs’ figurative elements further differentiate the marks, due to their clearly different design, colour and location within the marks. The opponent’s contention that they are similar in that they both represent an asymmetric stylised star cannot be shared. The figurative element of the contested sign shows a circle of colourful four figures which has nothing in common with the device of the earlier mark consisting of white intersecting rectangles. Hence, overall the signs are visually similar to a low degree.

Aurally, the only similarity between the signs resides in the pronunciation of the word ‘LEADERS’. However, this coincidence has little impact within the overall impression created by the marks considering its location between the words ‘YOUNG’ and ‘PROGRAMME’. Indeed, the additional words at the beginning and ending of the contested sign result in considerable differences between the signs as regards their aural pattern and intonation. Therefore, even considering the limited impact of the non-distinctive element ‘PROGRAMME’ of the earlier mark, overall the marks are, at most, aurally similar to a low degree.

Conceptually, the marks do not share any concept, since the only coinciding element will not be understood by the public on which the comparison is focussed. The other elements, insofar as they are meaningful convey different concepts. For example, the word ‘PROGRAMME’ of the contested sign conveys a concept. However, this has little impact, since it will be perceived as indicating that the services are being provided according to a plan or schedule and, therefore, it cannot indicate the commercial origin of the mark. The attention of the relevant public will rather be attracted by the additional figurative elements, which are not similar, the one in the earlier mark showing three identical rectangles joined in the shape of a star and the one in the contested sign portraying four figures with outstretched arms arranged in a circle.

Hence, the signs are not similar conceptually.

As the signs have been found to have some similarity 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 on which the comparison is focussed. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors that must be taken into account. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29.09.1998, C-39/97, Canon, EU:C:1998:442, § 17; 22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

However, in this case the low degree of visual and aural similarity referred to in section c) above, cannot be counterbalanced by the assumed identity of the services. Considering that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), the differences between the signs on a visual, aural and conceptual level outweigh the single point of similarity created by the word ‘LEADERS’ being one of several different elements in the contested sign.

Indeed, the contested sign’s additional verbal and figurative elements, namely the words ‘YOUNG’ and ‘PROGRAMME’ and the colourful figures in a circle, result in considerable differences between the signs as regards their appearance, structure, aural pattern. Due to the additional words, the verbal elements of the contested sign more than triple the length of the verbal element of the earlier mark and give the contested sign a different rhythm and intonation. Moreover, considering that the word ‘LEADERS’ does not dominate the contested sign in terms of distinctiveness or size or location, and that the signs’ figurative elements differ in terms of their graphic represent, concept and location within the mark, the impact of the coincidence in the word ‘LEADERS’ must be considered very low within the overall impression conveyed by the marks.

Therefore, taking all of the above into consideration, and bearing in mind, in particular, that no enhanced distinctiveness of the earlier mark was claimed, the overall impression given by the signs is sufficiently different for consumers to safely distinguish between the signs and, consequently, they will be unlikely to believe that the services originate from the same undertaking or from economically-linked undertakings. Having regard to the differences between the conflicting marks, this assessment is not invalidated by the fact that the contested services were assumed to be identical.

Therefore, the Opposition Division concludes that there is no likelihood of confusion for part of the non-English-speaking part of the public.

This conclusion applies a fortiori to the rest of the EU-public as well the situation in which the consumers display a high level of attentiveness. To the extent that the EU-consumers understand the word ‘LEADERS’, the public will perceive this term within the contested sign as making reference to the intended users of the services in question and, thus, not as an independent distinctive element. As a result for this part of the public the signs are even less similar.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Christian RUUD

Adriana VAN ROODEN

Frédérique SULPICE

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.