CANCELLATION No 12 939 C (INVALIDITY)

Bénédict Network International Sàrl, Place Chauderon 3, 1003 Lausanne, Switzerland (applicant), represented by Office Freylinger S.A. 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

Bénédict-Schule Zürich AG, Militärstraße 106, 8004 Zürich, Switzerland (EUTM proprietor), represented by Liesegang & Partner mbB, Rechtsanwälte, Kettenhofweg 1, 60325 Frankfurt am Main, Germany (professional representative).

On 18/01/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 13 080 254 is declared invalid for some of the contested goods and services, namely:

Class 16:        Printed matter; Stationery and educational supplies.

Class 41:        Publishing and reporting; Education, entertainment and sports; Education and instruction.        

3.        The European Union trade mark remains registered for all the remaining services, namely:

Class 41:        Translation and interpretation.

Class 43:        Temporary accommodation; Provision of food and drink; Rental of furniture, linens and table settings; Temporary accommodation.

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 080 254. The application is based on European Union trade mark registration No 3 989 861. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods and services covered by the conflicting marks in Classes 16 and 41 are either identical or highly similar. In relation to the contested services in Class 43 the applicant finds some similarity with some of the services in Class 41 covered by the earlier mark. The applicant analyses the similarity between the signs and finds them visually ‘very similar’ and aurally and conceptually identical. Based on the above findings, the applicant comes to the conclusion that there exists a likelihood of confusion on behalf of the public and requests the Office to invalidate the contested EUTM and to order the EUTM proprietor to pay the costs.  

The EUTM proprietor does not submit observations in reply.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 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.

The goods and services on which the application is based are the following:

Class 9:        Multimedia software and presentations, in particular for education.        

Class 16:        Magazines, periodicals, newsletters, teaching material (except apparatus), books and manuals (handbooks); writing implements, pads of writing paper.

Class 35:        Commercial or industrial management assistance, computerised file management, in particular operation and management of business mailing lists; case studies (business consultancy) for commerce and industry, personnel recruitment and/or placement.

Class 41        Education, providing of training, teaching; correspondence teaching and courses, in particular by electronic mail, postgraduate teaching, preparation for competitions and examinations, organisation of competitions and examinations, arranging and conducting of training courses, language teaching, issuing of diplomas and certificates of equivalence, providing of training and education, including awarding certificates of specialisation and excellence, publication of teaching books, manuals and computerised or multimedia course aids; assistance relating to the continuing training of business managers; vocational guidance.

Class 42        Copyright management and management of other intellectual property rights, including the awarding of licences (licensing and franchising), certification of diplomas and certificates of equivalence.

The contested goods and services are the following:

Class 16:        Printed matter; Stationery and educational supplies.        

Class 41:        Publishing and reporting; Translation and interpretation; Education, entertainment and sports; Education and instruction.

Class 43:        Temporary accommodation; Provision of food and drink; Rental of furniture, linens and table settings; Temporary accommodation.

The terms in particular and including, used in the applicant’s list of goods and services, indicate 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, they introduce a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, according to Article 28(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 16

The contested printed matter includes as a broader category the applicant’s books and manuals (handbooks). Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested stationery includes as a broader category the applicant’s writing implements. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested educational supplies includes as a broader category the applicant’s teaching material (except apparatus). Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

Contested services in Class 41

Education (listed twice in the specification of the EUTM proprietor) is covered by the specifications of both marks. The services are identical.

The contested instruction is included in the applicant’s broader category of education. The services are identical.

The contested publishing includes as a broader category the applicant’s publication of teaching books, manuals and computerised or multimedia course aids. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested sports overlaps with the applicant’s organisation of competitions in the part: organisation of sporting activities competitions. Although most of the services of the applicant relate to education, without any specific addition indicating that organisation of competitions is only related to education and as far as organisation of competitions is classified in Class 41 which also includes sporting activities, the Cancellation Division finds that organisation of competitions can relate also to the field of sports. As far as the applicant was not required to prove the use of the earlier mark, the comparison should be performed according to the specification of the covered goods and services by applying the established classification principles. The contested services are, therefore considered identical to the applicant’s services.

The contested reporting in Class 41 refers to reporters services (news). These services are considered similar to the applicant’s goods newsletters in Class 16 as they can coincide in producer/provider, purpose and end user.

The contested entertainment is similar to a low degree to the applicant’s publication of teaching books, manuals and computerised or multimedia course aids as they can coincide in distribution channels and are also complementary.  

The contested translation and interpretation are specific services provided by specialised companies and/or individuals that are different from those that provide (language) teaching, training or other kinds of education services. The nature of the services and their purpose and method of use are clearly different. Furthermore, they are neither in competition, nor complementary. Occasional coincidence in end users is not an argument for finding a level of similarity. Contrary to the applicant’s argument translation and interpretation cannot be considered services related to the learning and practising of other languages. The provision of translation and interpretation services requires already a proficient level of knowledge of at least two languages. These services are, therefore, dissimilar to the services of the applicant in Class 41. The same is valid also for the remaining goods and services of the applicant in classes 9, 16, 35 and 42. There are no factors according to the criteria specified above which taken separately or in combination may result in a finding of level of similarity between the contested services and any of the applicant’s goods and/or services.      

Contested services in Class 43

The contested services in Class 43 are mainly provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation. They are obviously quite different from any and all of the applicant’s goods and services. The arguments of the applicant that these services are similar to education and language teaching because the latter are often provided inside boarding schools where students sleep and eat and that traditional primary or secondary schools offer the possibility for their students to take some lunch inside the school at noon and, therefore, provide food and drink, cannot be followed. Such an approach does not comport with the principles for finding similarity established by the case-law. The fact remains that these are services of completely different nature, having clearly different purpose and method of use and are provided by different establishments requiring completely different expertise and offered through different distribution channels. Moreover, they are neither complementary nor in competition. Again, the mere fact that they may occasionally coincide in end user is not enough for finding a level of similarity. All in all, the contested services in Class 43 are dissimilar to any and all of the applicant’s goods and services.

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 are directed at the public at large. The degree of attention is likely to vary from below average (for instance in relation to stationery, which are cheap goods purchased on a regular basis) to even higher than average (for instance in relation to education, since the average consumer is normally very attentive to the service provider when enrolling to an education course).

3. The signs

BENEDICT
Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark which will be recognised by the average consumer as a name, where part of the consumers may even associate it with a particular famous person called by that name, such as the St. Benedict, Pope Benedict, Benedict Cumberbatch, etc.

The contested mark is a figurative mark representing the same name in slightly stylised italic red typescript where the first letter is capitalised and the rest of the letters are in lower case. An apostrophe is placed above each of the letters ‘e’.

Both marks have no elements which can be considered dominant or more/less distinctive than other elements.

Visually, in case of word marks the use of upper or lower case letters is not relevant, since it is the word as such which is protected. The signs coincide in ‘Benedict’ and differ in the stylization of the contested sign as described above including the apostrophes placed above the letters ‘e’ which have no counterpart in the earlier mark.  

In relation to the stylisation of the contested sign it is to be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to a high degree.

Aurally, the apostrophes placed above the letters ‘e’ of the contested sign are not likely to change the pronunciation of the verbal element. Therefore, the signs are aurally identical.

Conceptually, the General Court has accepted that names have a concept. Since both signs refer to the same name (where again the apostrophes in the contested sign cannot change the same perception on behalf of the public) they are conceptually identical.

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 applicant 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 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).

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.

Account is also taken of the fact that 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).

By applying the above principles and taking on board the particularities of the case at hand as established in the analysis above, the Cancellation Division finds that the differences between the signs attributed mainly to the stylised visual appearance of the contested sign are not enough for the average consumer to distinguish the identical and similar goods and services (including those similar to a low degree only) designated by the conflicting signs with regard to their commercial origin.

Even the increased degree of attention of the relevant consumer in relation to some of the relevant services cannot impact this finding to an extent where likelihood of confusion can safely be excluded. Bearing in mind the average distinctiveness of the earlier mark and the oral and conceptual identity and high visual similarity between the signs, it appears inevitable that the average consumer will mistakenly believe that the conflicting goods and services derive from the same company or at the very least, from companies which are economically linked.  

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 3 989 861.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade mark.

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

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.

Since the cancellation 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 Cancellation Division

Denitza STOYANOVA-VALCHANOVA

Plamen IVANOV

Adriana Pieternella VAN ROODEN

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.