OPPOSITION DIVISION
OPPOSITION No B 2 802 752
Rastislav Kulich, Valova 12, 921 01 Piešťany, Slovakia (opponent), represented by
Tatiana Brichtová, Grösslíngova 6-8, 811 09 Bratislava, Slovakia (professional
representative)
a g a i n s t
Reichl & Partner Werbeagentur Gesellschaft mbH, Harrachstraße 6, 4020 Linz,
Austria (applicant), represented by Georg Bauer, Museumstraße 6-8, 4020 Linz,
Austria (professional representative).
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 802 752 is upheld for all the contested services.
2. European Union trade mark application No 15 736 515 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMIMARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the services European Union trade mark
application No 15 736 515 for the word mark ‘blue danube valley’. The opposition is
based on European trade mark registration No 15 569 676 for the word mark
‘DANUBE VALLEY’. 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
Decision on Opposition No B 2 802 752 page: 2 of 5
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs and the relevant public.
a) The services
The services on which the opposition is based are, inter alia, the following:
Class 42: Information technology [IT] consultancy; Outsource service providers
in the field of information technology; Computer technology
consultancy; Creating and maintaining of websites; Research and
development; Development services in the field of software and
consultancy therefor; Hosting computer sites (web sites); rental of
websites; Web site design consultancy; Designing and developing
webpages on the internet.
The contested services are the following:
Class 42: IT consultancy, advisory and information services; Software
development.
IT consultancy; software development are identically contained in both lists of
services (including synonyms).
Advisory services refer to providing advice that is tailored to the circumstances or
needs of a particular user and that recommends specific courses of action for the
user. Information services, on the other hand, refers to providing a user with
materials (general or specific) about a matter or service but not advising the user on
specific courses of action. Both advisory and information services are offered by IT
consultants and therefore are included in consultancy services. It follows that the
contested IT advisory and information services are included in the broader category
of the opponent’s Information Technology [IT] consultancy. Therefore, they are
identical.
b) 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 at issue are specialised services directed mainly at
business customers with specific professional knowledge or expertise.
As the IT services in question may have a considerable impact on the success of a
business, the attention will tend to be higher than average for such services.
Decision on Opposition No B 2 802 752 page: 3 of 5
c) The signs
DANUBE VALLEY blue danube valley
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 common elements ‘danube valley’ are meaningful in certain territories, for
example, in those countries where English is understood. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
English-speaking part of the public.
Both the earlier mark and the contested sign are word marks. The fact that one is
depicted in capital letters and the other in lower case is irrelevant as the words as
such enjoy protection. The earlier mark is composed of the words ‘danube valley’
which will be understood by English speakers as the geographical area where the
river Danube flows through the valley of mountainous regions. The contested sign
contains the words ‘blue danube valley’ which has the same meaning except the
colour of the river ‘blue’ is specified in this case. Blue is a colour often associated
with the river Danube not only due to its colour but also to the well-known Walz ‘The
Blue Danube’ by Johann Strauss. None of the word elements of either mark have any
meaning in relation to the services in question. Therefore, they are distinctive.
Aurally and visually, the signs coincide in the sound of the distinctive words
‛danube valley’, present identically in both signs. They differ in the first word of the
contested sign ‘blue’, that has no counterpart in the earlier mark. Therefore, the signs
are aurally and visually highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a very similar
meaning, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 802 752 page: 4 of 5
d) 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.
e) Global assessment, other arguments and conclusion
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.
According to the case law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.).
Account is 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). 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).
In the present case the services in question are identical and the signs are visually,
aurally and conceptually highly similar. The addition of the word ‘blue’ to the
contested sign does little to distinguish the signs due to the fact that blue is an
adjective very often associated with the river Danube due to its colour and to the very
famous ‘Blue Danube’ Waltz, mentioned above. The very close conceptual meaning
of the signs means that they will be very easily confused in particular in connection
with identical services.
Considering all the above, there is a likelihood of confusion on the part of the
English-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. There is likelihood of confusion even for
those with a high degree of attention due to the high similarity between the signs.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 15 569 676. It follows that the contested trade mark
must be rejected for all the contested services.
Decision on Opposition No B 2 802 752 page: 5 of 5
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Tobias KLEE Lynn BURTCHAELL Denitza STOYANOVA-
VALCHANOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.