OPPOSITION No B 2 705 633

Gunther Diehm, Uhlandstr. 25, 74072 Heilbronn, Germany, and Jochen Diehm, Uhlandstr. 25, 74072 Heilbronn, Germany (opponents), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Eijsink Hengelo Werkmaatschappij B.V., Platinastraat 25, 7554 NC Hengelo, The Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 633 is rejected in its entirety.

2.        The opponents bear the costs, fixed at EUR 300.

REASONS:

The opponents filed an opposition against some the services of European Union trade mark application No 14 830 467, namely against some of the services in Class 35 and all services in Class 36. The opposition is based on European Union trade mark registration No 4 685 079. The opponents 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:         Tax consultancy (included in Class 35), tax preparation, payroll preparation, preparation of annual financial statements, financial accounting and auditing, business management, business administration, auditing; business consultancy and advisory services; active and accompanying consultancy, for others, with regard to business organisation and management, company succession, auditing (included in Class 35) and personnel management.

Class 36:        Financial affairs; accountancy (included in Class 36) and trusteeship (included in Class 36); monetary affairs; investment and financial consultancy, sales financing consultancy, credit consultancy, financial management; active and accompanying consultancy, for others, with regard to financial issues, investment decisions (included in Class 36), with regard to financing, including public funds, with regard to bank discussions and credit negotiations; fiscal assessments.

The contested services are the following:

Class 35:        Accounting.

Class 36:        Services in the field of payment transactions; financial transactions via electronic channels, including the internet; leasing of data communications equipment, in particular for financial transactions.

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 deemed to be identical are financial and monetary services directed at the public at large and at business consumers. Since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention could be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed). Therefore, the degree of attention of the relevant public is considered higher than average.

3. The signs

BOOKMAN
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 earlier mark is a word mark, ‘BOOKMAN’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The contested sign is a figurative mark consisting of a combination of thick black circles and lines, which may be perceived by part of the public as a highly stylised depiction of the word ‘booq’ or of the word ‘boog’ by the part of the public that does not have the letter ‘q’ in the alphabet of their official languages, or as combination of two letters ‘b’ and two letters ‘o’, the last ‘b’ being inverted. Considering all these possible perceptions of the contested sign, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that will perceive the contested sign as a highly stylised depiction of the word ‘booq’. This part of the relevant public would be more likely to confuse the signs, in view of the contested sign’s aural similarities with the first part of the earlier mark, and this scenario therefore constitutes the opponents’ best-case scenario.

Although the earlier mark, ‘BOOKMAN’, is depicted as one word, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, at least the English-speaking part of the public will recognise the English words ‘BOOK’ and ‘MAN’ in the earlier mark and perceive them as referring to, inter alia, ‘a systematic record of commercial transactions, minutes of meetings, attendance, etc. also: a volume containing such records; an account book, a ledger, or (in later use) its electronic equivalent’ and ‘an adult male human being’, respectively (information extracted from Oxford English Dictionary on 13/07/2017 at http://www.oed.com). In relation to the relevant financial and related services, the word ‘BOOK’ is considered weak for this part of the public, since it may be seen as alluding to their intended purpose (bookkeeping – the activity or occupation of keeping accounts or other records of the financial affairs of a trader, public office, etc.). When taken together with the word ‘MAN’, the combination may allude to a bookkeeper – a person whose job it is to keep an accurate record of the money that is spent and received by a business or other organisation. Therefore, the distinctiveness of the expression ‘BOOKMAN’ will be lower than average in relation to the relevant financial and related services for this part of the public.

For the part of the public that will perceive the word ‘BOOKMAN’ as one meaningless word (e.g. the Bulgarian-, Czech-, Estonian-, Greek-, Hungarian-, Italian-, Latvian-, Portuguese-, Slovak- and Spanish-speaking parts of the public), its distinctiveness is seen as average. The same applies to the part of the public that might understand the word ‘MAN’ as referring to an adult male human being, such as the German-speaking part of the public, because it is very similar to the equivalent German word ‘Mann’ or because it is a basic English word.

Considering the abovementioned possible perceptions of the earlier mark, ‘BOOKMAN’, the Opposition Division will first examine the opposition in relation to the part of the public for which the word ‘BOOKMAN’ is meaningless and, therefore, has a normal degree of distinctiveness.

The contested sign, ‘booq’, will be perceived as meaningless by the relevant public and, therefore, has an average degree of distinctiveness in relation to the relevant services.

Neither of the marks under comparison has any element that could be considered more dominant or visually outstanding.

Visually, the signs are similar to the extent that they coincide in their first three letters, ‘BOO’. However they differ in all other aspects, namely their last letters, ‘KMAN’ of the earlier mark versus ‘q’ of the contested sign and the stylisation of the contested sign.

Although consumers generally tend to focus on the initial part of a sign when encountering a trade mark, the significant differences in the lengths of the signs (the earlier mark consists of seven letters, whereas the contested sign consists of four) and the striking stylisation of the contested sign, together with the visual impression created by the abovementioned differing letters, will clearly overshadow the commonalities at the beginnings of the signs and create significant visual differences between the marks. Therefore, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛BOO’, present identically in both signs. Moreover, for some parts of the relevant public, for example, the Czech-, Estonian-, Portuguese-, Slovak- and Spanish-speaking parts of the public, the pronunciation of the signs fully or partially coincides in the sound of the fourth letter ‘K’ of the earlier mark and the sound of the last (fourth) letter ‘q’ of the contested sign (which will be pronounced either identically or similarly). However, the pronunciation differs in the sound of the letters /MAN/ of the earlier mark, which has no counterparts in the contested sign. Therefore, the marks are considered aurally similar to 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 for this part of the relevant public.

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 opponents did not explicitly claim that their 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/or 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).

As concluded above, the contested goods are deemed identical to the opponents’ goods and they target the public at large and business consumers with a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.

The earlier mark and the contested sign are similar insofar as they have their three first letters ‘BOO’ in common and because of the aural similarity or identity of the sounds of their fourth letters ‘K’ and ‘q’ for part of the relevant public. However, as explained in detail in section c), these commonalities are only of such a nature as to lead to a finding of a low degree of visual similarity and an average degree of aural similarity.

Considering the striking stylisation of the contested sign, which clearly distinguish it from the earlier mark visually, as well as the significantly different lengths of the marks under comparison and the fact that the signs do not have any conceptual link that would lead the public to associate them with each other, it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the abovementioned elements that the signs have in common.

Consequently, it can be concluded that, despite the similarities between the marks under comparison, the differences between them are sufficiently striking and will avoid a likelihood of confusion, including a likelihood of association, among the relevant public with a higher than average degree of attention, even in relation to the identical services.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

The opponents refer to previous decisions of the Office to support their arguments, namely 30/05/2014, B 1 792 483, POCKET / POCKETBOOK; 30/05/2014, B 2 202 524, MONSTER / MONSTER MAN; 29/05/2015, B 1 832 784, GAS / GAZ MAN; 14/09/2012, B 1 902 264, HORSE / HORSE MAN; 04/11/2013, B 2 070 038, MAN / TOPMAN. However, in all these cases either the earlier mark was fully included in the contested sign or the differing verbal element was weak in relation to the relevant goods. Therefore, the opposition decisions cited by the opponents are not considered comparable to the present case and are not relevant to the present proceedings.

For the sake of completeness, the Opposition Division points out that there is no need to proceed further to a comparison of the signs for the English-speaking part of the public, which will perceive the abovementioned meanings of the words ‘BOOK’ and ‘MAN’ in the earlier mark. Indeed, if there is no likelihood of confusion for those consumers who do not perceive any meaning in the word ‘BOOKMAN’ in the earlier mark, a fortiori there is no likelihood of confusion for those consumers who will perceive it as meaningful, since, first, the earlier mark and the contested sign will not be similar conceptually; and, second, the mark ‘BOOKMAN’ will have a lower than average degree of distinctiveness for this part of the public. Since these two factors would make a likelihood of confusion even less likely, the outcome of the present decision would not be different.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponents.

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 opponents are the losing party, they 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

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Jessica LEWIS

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.